WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris Products S.A. v. Global Domain Privacy / Patrick Byrne, Screenstar and Fastiqos / Rick Burn, Websiteking
Case No. D2021-0950
1. The Parties
The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondents are Global Domain Privacy / Patrick Byrne, Screenstar, Ireland and Fastiqos / Rick Burn, Websiteking, Ireland.
2. The Domain Names and Registrars
The disputed domain name <fastiqos.com> is registered with Launchpad.com Inc. The disputed domain name <iqosfast.com> is registered with Register SPA (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 30, 2021. On March 30, 2021, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On March 30, 2021, the Registrar Launchpad.com Inc. and on April 1, 2021 the Registrar Register SPA transmitted by email to the Center their 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 April 1, 2021 providing the registrant and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint or to file a separate complaint for each of the disputed domain names. The Complainant filed an amended Complaint on April 6, 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 April 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 28, 2021. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on April 29, 2021.
The Center appointed Marilena Comanescu as the sole panelist in this matter on May 5, 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 a subsidiary of Philips Morris International, Inc., an international tobacco company which is selling its products in approximately 180 countries worldwide.
The Complainant manufactures tobacco products, including a system promoted under the mark IQOS, which is an alternative to combustible cigarettes and consists of a controlled heating device into which specially designed tobacco products are inserted and heated to generate a flavourful nicotine-containing aerosol. The IQOS System was launched in Japan in 2014 and, with investments of USD 6 billion in sales and marketing, it is currently sold in 64 markets across the globe reaching approximately 17,6 million relevant consumers. The Compainant’s IQOS System is primarily distributed through official or endorsed stores.
The Complainant holds a large portfolio of trademarks, including the following:
- the International trademark registration number 1218246 for the word IQOS, registered on July 10, 2014, and designating many countries worldwide, including the European Union, and covering goods in Nice classes 9, 11, and 34; and
- the International trademark registration number 1338099 for the word IQOS with device, registered on November 22, 2016, and designating many countries worldwide, including the European Union, and covering services in Nice class 35.
Previous decisions under the Policy have recognized that the Complainant’s IQOS trademark is well-known worldwide in relation to tobacco products. See e.g. Philip Morris Products S.A. v. Viktor Gubin, WIPO Case No. D2020-2196; Philip Morris Products S.A. v. Yang Jiang Nan, WIPO Case No. D2018-1869; or Philip Morris Products S.A. v. Domain Admin ContactID 5801095, FBS INC, Whoisprotection biz / Bahadır Veziroğlu, WIPO Case No. D2018-2596.
The disputed domain names <fastiqos.com> and <iqosfast.com> were registered both on March 14, 2021. At the time of filing the Complaint, the disputed domain names were connected to commercial websites, having similar content, allegedly selling and offering worldwide shipping for the Complainant’s IQOS System (or at least the Complainant’s specially designed HEETS tobacco products), displaying the Complainant’s trademarks and official product images and claiming copyright in the material presented on such websites.
5. Parties’ Contentions
The Complainant contends that the disputed domain names are confusingly similar to its distinctive trademark IQOS, the Respondents have no rights or legitimate interests in the disputed domain names, and the Respondents registered and are using the disputed domain names in bad faith.
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
In view of the Respondents’ default, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondents. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:
(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 the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
The Panel will further analyze the potential concurrence of the above circumstances.
A. Preliminary Procedural Issue. Consolidation of Multiple Disputed Domain Names and the Respondents
According to the provisions of paragraph 10(e) of the Rules, the Panel has the power to decide the consolidation of multiple domain names disputes. Further, paragraph 3(c) of the UDRP Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.
In the present case, there are two disputed domain names, and apparently two Respondents. According to the information provided by the Registrars, the disputed domain name <fastiqos.com> was registered by the Respondent Fastiqos / Rick Burn, Websiteking and the disputed domain name <iqosfast.com> was registered by the Respondent Global Domain Privacy / Patrick Byrne, Screenstar. They will be collectively referred to as the “Respondent”.
The present disputed domain names: (i) were registered in the same day; (ii) were created in a similar manner, reproducing the Complainant’s trademark IQOS together with the dictionary word “fast”; and (iii) were used in a similar manner, for online commercial websites allegedly offering the Complainant’s products and displaying the Complainant’s trademarks.
The Respondent had the opportunity to comment on the consolidation request made by the Complainant but it chose to remain silent.
For the above, the Panel finds that the disputed domain names are subject to common control and it would be equitable and procedurally efficient to decide the consolidation of multiple disputed domain names and the Respondents in the present procedure. See also section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
B. Identical or Confusingly Similar
The Panel finds that the Complainant holds rights in the IQOS trademark.
Both the disputed domain names <iqosfast.com> and <fastiqos.com> incorporate the Complainant’s trademark IQOS with an additional term, “fast”. However, such addition does not prevent a finding of confusing similarity as the Complainant’s trademark is clearly recognizable within the disputed domain names.
Numerous UDRP panels have considered that the addition of other terms (whether descriptive, pejorative, meaningless or otherwise) to trademarks in a domain name is not sufficient to escape a finding of confusing similarity. See section 1.8 of the WIPO Overview 3.0.
Further, it is well established in decisions under the UDRP that the generic Top-Level Domain (“gTLD”) (e.g.,”.com”, “.site”, “.info”, “.shop”) may typically be disregarded for the purposes of consideration of confusing similarity between a trademark and a domain name. See section 1.11 of the WIPO Overview 3.0.
Given the above, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademark IQOS, pursuant to the Policy, paragraph 4(a)(i).
C. Rights or Legitimate Interests
The Complainant asserts that the Respondent does not hold any trademark rights, license or authorization whatsoever to use the mark IQOS, that the Respondent is not commonly known by the disputed domain names, and that the Respondent has not used the disputed domain names in connection with a legitimate noncommercial or fair use or a bona fide offering of goods and services.
Under the Policy, “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”. See section 2.1 of theWIPO Overview 3.0.
The Respondent has not replied to the Complainant’s contentions and has not come forward with relevant evidence to rebut the Complainant’s prima facie case.
There is nothing in the record suggesting that the Respondent has ever been commonly known by the disputed domain names.
Further, there is no evidence before the Panel to suggest that the Respondent has made a bona fide use of the disputed domain names, or has been known by these disputed domain names, or is making any legitimate noncommercial or fair use of the disputed domain names. In fact, at the time of filing the Complaint the disputed domain names resolved to commercial websites featuring the Complainant’s trademarks and product images and offering for sale unauthorized products bearing the Complainant’s trademarks without the Complainant’s consent.
In this case, assuming that the products or at least some of the products offered for sale under the disputed domain names were genuine IQOS branded products, the key question under this element is whether the Respondent’s use of the disputed domain names for such resale amounts to a bona fide offering of goods under paragraph 4(c)(i) of the Policy. The current state of UDRP panel decisions in relation to this issue is helpfully summarized in section 2.8 of theWIPO Overview 3.0 as follows:
Normally, a reseller, distributor or service provider can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, the site’s accurately and prominently disclosing the registrant’s relationship with the trademark holder and the respondent must not try to “corner the market” in domain names that reflect the trademark.
This summary is based on UDRP panel decisions such as Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. At least one condition that is outlined has clearly not been satisfied by the Respondent in this case: at the time of filing the Complaint, on the websites under the disputed domain names there was no accurate information regarding the Respondent and its relationship with the Complainant thus generating a likelihood of confusion for the Internet users accessing Respondent’s websites.
Further, the Complainant does not currently offer for sale its IQOS System in all the countries worldwide, and the online shops provided under the disputed domain names create the false impression that the Complainant has officially launched the IQOS System worldwide.
For all these reasons, the Panel finds that the second element of the Policy is established, and the Respondent has no rights or legitimate interests in respect of the disputed domain names, pursuant to the Policy, paragraph 4(a)(ii).
D. Registered and Used in Bad Faith
The Complainant holds registered trademark rights for IQOS since 2014.
The disputed domain names were created in 2021 and incorporate the Complainant’s distinctive mark with an additional dictionary term “fast”.
For the above, the Panel finds that the disputed domain names were registered in bad faith, with knowledge of the Complainant, its business and particularly targeting its IQOS trademark.
Paragraph 4(b)(iv) of the Policy provides that the use of a domain name to intentionally attempt “to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location” is evidence of registration and use in bad faith.
Given that the disputed domain names incorporate the Complainant’s well-known trademark and the websites operated under the disputed domain names display the Complainant’s trademarks and official product images, indeed in this Panel’s view, the Respondent intended to attract Internet users accessing the websites corresponding to the disputed domain names who may be confused and believe that the websites are held, controlled by, or somehow affiliated or related to the Complainant, for its commercial gain.
The Respondent registered the disputed domain name <iqosfast.com> under a privacy service and refused to participate in the present proceeding in order to put forward any arguments in its favor. Having in view the other circumstances of this case, such facts constitute further evidence of bad faith behavior.
Furthermore, it was consistently found by previous UDRP panels that the mere registration of a domain name that is identical or confusingly similar to a third party’s well-known trademark constitutes, by itself, a presumption of bad faith registration for the purpose of Policy. See section 3.1.4 of the WIPO Overview 3.0.
For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain names in bad faith, pursuant to the Policy, paragraph 4(a)(iii).
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 <iqosfast.com> and <fastiqos.com> be transferred to the Complainant.
Date: May 18, 2021