WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Mate Kiss and Asztalos Matyas

Case No. D2021-0553

1. The Parties

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

The Respondents are Mate Kiss, Romania, and Asztalos Matyas, Hungary.

2. The Domain Names and Registrars

The disputed domain name <akosshop.com> is registered with DotRoll Kft. (the “First Registrar”).

The disputed domain name <iqosshop.info> is registered with EuroDNS S.A. (the “Second Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 23, 2021. On February 23, 2021, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On February 24, 2021, the First Registrar and the Second Registrar each transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names, which differed from the named Respondents and contact information in the Complaint.

The Center sent an email communication to the Complainant on February 24, 2021, 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 March 1, 2021.

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 Respondents of the Complaint, and the proceedings commenced on March 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 25, 2021. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on March 26, 2021.

The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on April 8, 2021. 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 part of the Philip Morris International Inc. (hereinafter referred to as “PMI”), an international tobacco conglomerate that sells tobacco products in around 180 countries of the world.

One of its products is the IQOS system, a precisely controlled heating device into which specially designed tobacco products under the trademarks HEETS or HEATSTICKS are inserted and heated to generate flavorful nicotine-containing aerosol. Such products are being marketed in key cities in around 48 markets across the world through official IQOS stores and websites and selected authorized distributors and retailers.

The Complainant owns among others the following trademarks (Annexes 6 and 7 to the Complaint):

- International registration No. 1218246 for the word mark IQOS, registered on July 10, 2014 in classes 9, 11, and 34;

- International registration No. 1329691 for the device mark IQOS, registered on August 10, 2016 in classes 9, 11, and 34; and

- International registration No. 1338099 for the device mark IQOS, registered on November 22, 2016, in class 35.

The disputed domain names were registered on May 26, 2020 and December 24, 2020, respectively. The <akosshop.com> disputed domain name presently redirects Internet users to the webpage available at the disputed domain name <iqosshop.info> which consists of an online shop named “IQOSSHOP.NET” where the Complainant’s product image is also reproduced.

5. Parties’ Contentions

A. Complainant

The Complainant claims to have developed the IQOS system, first launched in Nagoya, Japan in 2014.

Asserting to have invested USD 6 billion in extensive international sales and marketing efforts to promote its IQOS system, the Complainant states that its new product has obtained considerable international success and reputation, approximately having 17.6 million relevant consumers worldwide.

According to the Complainant, the disputed domain names are under common control given that (i) they were registered through a privacy registration service provider, so as to conceal the identity of the real owner and operator of the disputed domain names; (ii) the disputed domain names are of highly similar composition; and (iii) when accessing the disputed domain name <akosshop.com> the Internet user is redirected to the disputed domain name <iqosshop.info> and resolves to the same webpage.

The Complainant further states that the Respondents are not known nor are in any way related to any company belonging to PMI and are not authorized to use the IQOS trademarks.

Also according to the Complainant, the use of the disputed domain names in connection with an online shop clearly purporting to be an official online retailer of the Complainant’s IQOS system in Romania by using the Complainant’s IQOS trademark together with the non-distinctive and descriptive word “shop” and official product images characterizes an attempt to pass off as an official online retailer of the Complainant’s products in Romania.

Furthermore, the Respondents appear to further promote a Facebook page under the name “AkosShop.com” where the Complainant’s official product images and marketing materials are reproduced without the Complainant’s authorization, strengthening the false impression to Internet users that the Respondents are connected with or happen to be the Complainant’s official distributors, which is not true.

In addition to that, the Complainant argues that the Respondents are either the same person or a person connected with the named Respondent in the previous UDRP case Philip Morris Products S.A. v. Galati Ivesti, Serbia srl / Gold Hands, IQOSSHOP.NET, WIPO Case No. D2020-1219 in relation to the bad faith registration and use of the domain name <iqosshop.net> which was used in connection with a website substantially identical to the one to which the disputed domain names resolve.

Under the Complainant’s view, the disputed domain name <iqosshop.info> incorporates the Complainant’s IQOS trademark whereas the disputed domain name <akosshop.com> consists of a highly similar and almost identical phonetical equivalent to the Complainant’s IQOS trademark and both are thus confusingly similar therewith, being the addition of the descriptive term “shop” insufficient to avoid a finding of confusing similarity under the Policy. The Complainant further contends that the unlawful association with the Complainant’s trademarks is exacerbated by the use of the Complainant’s official product image at the top of the website without the Complainant’s authorization.

Regarding the absence of the Respondents’ rights or legitimate interests, the Complainant argues that:

i) it has not licensed or otherwise permitted the Respondents 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 these trademarks;

ii) the Respondents are not making a legitimate noncommercial or fair use of the disputed domain names, rather showing 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;

iii) the Respondents are not authorized resellers of the Complainant’s IQOS system;

iv) the criteria for a bona fide offering of goods or services as established in Oki Data Americas, Inc. v. ASD, Inc, WIPO Case No. D2001-0903 are not met, given that the Respondents are selling products other than the Complainant’s goods;

v) the disputed domain names and the content of the website to which they resolve suggest at least an affiliation with the Complainant which in fact does not exist; and

vi) the website to which the disputed domain names resolve includes no information regarding the identity of the provider of the website which further serves to perpetuate the false impression of a commercial relationship between the disputed domain names and the Complainant.

As to the registration and use of the disputed domain names in bad faith, the Complainant states that:

i) the Respondents knew of the Complainant’s trademarks when registering the disputed domain names;

ii) the IQOS mark is not commonly used to refer to tobacco products and therefore it is beyond the realm of reasonable coincidence that the Respondents chose the disputed domain names without intention of invoking a misleading association with the Complainant;

iii) the purpose of the Respondents’ registration of the disputed domain names was to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s registered IQOS trademarks as to the source, sponsorship, affiliation, or endorsement of their website;

iv) by reproducing the Complainant’s registered trademarks in the disputed domain names and in the title of the website, the Respondents’ website suggests the Complainant or an affiliated dealer of the Complainant as the source of the website which is not the case; being this suggestion also supported by the Respondents’ use of the Complainant’s official product image;

v) the Respondents’ appearing to be connected with the named Respondent in the UDRP case relating to <iqosshop.net> shows a pattern of bad faith conduct in connection with domain names incorporating the Complainant’s trademarks; and

vi) the choice to retain a privacy protection service so as to hide the Respondent’s true identity is a further indicative of bad faith as recognized in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.6.

B. Respondents

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

6. Discussion and Findings

Paragraph 4(a) of the Policy sets forth the following three requirements, which have to be met for this Panel to order the transfer of the disputed domain names to the Complainant:

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

(ii) the Respondents have no rights or legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

The Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present in order to obtain the transfer of the disputed domain names.

In accordance with paragraph 14(a) of the Rules, if the Respondents do not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.

Before turning to these questions, however, the Panel needs to address the issue of the consolidation of multiple Respondents.

A. Consolidation of Multiple Respondents

The Complainant requests that this Panel accept multiple Respondents in a single proceeding in view of the facts enumerated at the section 5.A. above.

Section 4.11.2 of the WIPO Overview 3.0 establishes that “[w]here a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.”

All of the aforementioned criteria are present in this case and therefore this Panel accepts such request considering that it would be more procedurally efficient to have the two disputed domain names dealt with at the same procedure, given that: (a) the disputed domain name <akosshop.com> redirects Internet users to the disputed domain name <iqosshop.info>; (b) both disputed domain names resolve to the same webpage; (c) the disputed domain names share a similar naming pattern; and (d) no objection was made by the Respondents regarding consolidation.

This Panel is satisfied, in view of the evidence submitted and on balance that the disputed domain names are indeed subject to a common control and that consolidation would be fair and equitable to all Parties.

B. Identical or Confusingly Similar

The Complainant has established rights over the IQOS trademark.

The disputed domain name <iqosshop.info> incorporates the Complainant’s IQOS trademark whereas the disputed domain name <akosshop.com> consists of a similar and almost identical phonetical equivalent to the Complainant’s IQOS trademark and both are thus confusingly similar therewith, being the addition of the descriptive term “shop” insufficient to avoid a finding of confusing similarity under the Policy. See WIPO Overview 3.0, section 1.8. Furthermore, the redirection of the disputed domain name <akosshop.com> to the disputed domain name <iqosshop.info> and resolution to an online shop named “IQOSSHOP.NET” where the Complainant’s product image is also reproduced affirms a finding of confusing similarity between the disputed domain name <akosshop.com> and the Complainant’s IQOS trademark. The Panel notes it appears prima facie that the Respondents are seeking to target the Complainant’s IQOS trademark through the disputed domain names. See WIPO Overview 3.0, section 1.15.

For the reasons above, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademark.

C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a nonexclusive list of circumstances that may indicate the Respondents’ rights or legitimate interests in the disputed domain names. These circumstances are:

(i) before any notice of the dispute, the Respondents’ use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or

(ii) the Respondents (as individuals, businesses, or other organizations) have been commonly known by the disputed domain names, in spite of not having acquired trademark or service mark rights; or

(iii) the Respondents are making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondents, in not responding to the Complaint, have failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain names. This entitles the Panel to draw any inferences from such default as it considers appropriate, pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make at least a prima facie case against the Respondents under the second UDRP element.

In that sense, and according to the evidence submitted, the Complainant has made a prime facie case against the Respondents which have not been commonly known by the disputed domain names and neither are authorized resellers of the Complainant’s IQOS system nor have they been licensed or otherwise permitted to use any of the Complainant’s trademarks or to register a domain name incorporating its IQOS trademark.

Also according to the evidence submitted by the Complainant, the use made of the disputed domain names in connection with an online shop allegedly offering third parties’ products, reproducing the Complainant’s IQOS trademark, together with the unauthorized reproduction of the Complainant’s official marketing product image, clearly suggests at least an affiliation with the Complainant which in fact does not exist. Such use does not constitute a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the dispute domain names in these circumstances.

The Panel also notes that the information on the website that resolves from the disputed domain names also appears to be from a template of an e-commerce platform used by the Respondents (for instance all telephone numbers being written as “+123 456 7890”) which indicates that the Respondents are concealing themselves and making it more difficult for Internet users to discern whether or not the disputed domain names are related with the Complainant or not.

Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondents do not have rights or legitimate interests with respect to the disputed domain names.

D. Registered and Used in Bad Faith

The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in respect of a disputed domain name, where a respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.

In this case, both the registration and use of the disputed domain names in bad faith can be found pursuant to Policy, paragraph 4(b)(iv) in view of the reproduction of the IQOS trademark or a confusingly similar approximation thereof in the disputed domain names, as well as the online shop that is available at the webpage relating to the disputed domain names, together with the unauthorized reproduction of the Complainant’s official product image, which create a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement thereof. Moreover, as discussed under section 6.C above, the Panel considers that the false contact details provided in the webpage relating to the disputed domain names are further indicatives of the Respondents’ bad faith.

For the reasons above, the Respondents’ conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain names.

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 names, <akosshop.com> and <iqosshop.info>, be transferred to the Complainant.

Wilson Pinheiro Jabur
Sole Panelist
Date: April 21, 2021