WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Registration Private / Domains By Proxy, LLC / Guil Vugman

Case No. D2018-2749

1. The Parties

The Complainant is Philip Morris Products S.A. of Neuchâtel, Switzerland, represented by Boehmert & Boehmert, Germany.

The Respondent is Registration Private / Domains By Proxy of Scottsdale, Arizona, United States of America / Guil Vugman of Los Angeles, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <iqosamerica.com> 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 November 29, 2018. On November 29, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 30, 2018, 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 December 4, 2018 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 amendment to the Complaint on December 5, 2018.

The Center verified that the Complaint together with the amendment to the 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 December 7, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 27, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 28, 2018. The Center appointed Andrea Jaeger-Lenz as the sole panelist in this matter on January 21, 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 a company which is part of the group of companies affiliated to Philip Morris International Inc. and is established in the tobacco sector. The Complainant’s products are sold in approximately 180 countries. Among the better known brands on the market is Marlboro, which is among the best-selling cigarette brands in the world.

The Complainant is in the process of adding innovative tobacco products to the classic range of combustible cigarettes, in which the tobacco is not burnt but heated to a certain temperature in order to generate an aerosol containing nicotine. The tobacco products are called “HEETS” or “HeatSticks”, while the electronic evaporator is called “IQOS”.

First launched in Japan in 2014, IQOS products are now available in key cities in 43 markets worldwide, with the exception of the United States. The Complainant made investments of USD 4.5 billion for international sales and marketing efforts. As a result, the IQOS products had a huge international success and reputation with almost 6 million legal-aged smokers having switched to using IQOS products worldwide.

IQOS products are sold almost exclusively through official Philip Morris IQOS stores and websites, as well as through a few authorized distributors and retailers.

The Complainant owns the following IQOS trademarks:

The disputed domain name <iqosamerica.com> was registered on November 19, 2018. It is linked to an online-shop, where apparently products of the Complainant with the brand “IQOS” and “HEETS” are offered for sale for customers in the United States.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain name is confusingly similar to the Complainant’s trademark and therefore meeting the first element of the UDRP according to paragraph 4(a)(i) of the Policy. The Complainant states that it is the registered owner of IQOS trademarks worldwide and the disputed domain name identically adopts the Complainant’s IQOS trademarks with the additional geographical term “America”. The Complainant further states that the generic Top-Level Domain in a domain name is not taken into account in the assessment of confusing identity or similarity. The Complainant also claims that the use of a generic geographical indication in the disputed domain name is not sufficient to eliminate a confusing similarity under the first element of the UDRP. Finally, the Complainant asserts that the reasonable Internet user visiting the website under the disputed domain name will expect to see a website that is commercially linked to the owner of the IQOS trademarks.

The Complainant argues that it has made a prima facie case that the Respondent has no rights, no legitimate interests nor is otherwise permitted to register the disputed domain name incorporating the IQOS trademarks of the Complainant. Therefore, the second element of the Policy is met. The Complainant further argues, that, as the Respondent is not an official distributor or licensed reseller of “IQOS” products, it neither uses the disputed domain name in a non-commercial or fair way, nor does it meet the requirements set forth for bona fide offering of goods. Rather, the disputed domain name itself, as well as the presentation of the website, suggests an affiliation with the Complainant and the IQOS trademark, which excludes a “fair use” or “bona fide offering of goods” under paragraph 4(c)(i) and (iii). All official product images are used on the website without permission, while copyright is claimed; the identity of the provider of the website is not revealed on the website, but merely indicated with “IQOS LIFE STYLE”; the disclaimer used is not clear and sufficiently visible, but is hidden on the website in such a way that the user only comes across it by chance. It therefore claims that the use of the disputed domain name cannot be considered a bona fide offering of goods and thus does not establish a legitimate interest on behalf of the Respondent.

The Complainant further states according to paragraph 4(a)(iii) of the Policy, that the disputed domain name was registered and used in bad faith and the third element of the UDRP was met. The Complainant argues that the IQOS brand was widely known. Thus, it is evident that the Respondent was aware of the Complainant’s IQOS marks. The Complainant further argues, that the Respondent’s website design misleadingly suggests that the website into which the disputed domain name resolves belongs to the Complainant or is an official affiliated dealer endorsed by the Complainant. Hence, the website was designed to generate commercial gain by misleading Internet users/customers. Finally, it points out that the use of a privacy protection service, which serves to conceal the true identity of the domain name registrant, can also be taken into account as a factor indicating bad faith.

According to paragraph 4(i) of the Policy the Complainant requests that the disputed domain name transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail, namely that

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

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name;

(iii) the Respondent has registered and is using the disputed domain name in bad faith.

By the Rules, paragraph 5(c)(i), it is expected of a respondent to “[r]espond specifically to the statements and allegations contained in the complaint and include any and all basis for the Respondent (domain name holder) to retain registration and use of the disputed domain name […]”.

In this case, the Center has employed the required means to achieve actual notice of the Complaint to the Respondent in compliance with the Rules, paragraph 2(a), and the Respondent was given the opportunity to present its case.

In the event of default, under the Rules, paragraph 14(b) “[…] the Panel shall draw such inferences therefore as it considers appropriate.” As stated by numerous UDRP panels (e.g., Viacom International Inc. v. Ir Suryani, WIPO Case No. D2001-1443), if the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, the Panel is left to render its decision on the basis of the uncontroverted contentions made and the evidence supplied by the Complainant: “[…] in the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended factual and legal conclusions as proven by such evidence.”

In the present administrative proceeding, the Respondent has chosen not to submit a response. The Panel therefore takes its decision on the basis of the statements and documents before it and in accordance with the Policy, the Rules and any rules and principles of law as deems applicable.

A. Identical or Confusingly Similar

The test of identity or confusing similarity under the Policy, paragraph 4(a)(i) is limited in scope to a direct comparison between the Complainant’s trademark and the textual string which comprises the disputed domain name. In this case, the Complainant has demonstrated registered trademark rights in the mark IQOS which predate the registration of the disputed domain name. The disputed domain name consists of the term “iqosamerica”.

The disputed domain name contains the Complainant’s trademark in its entirety and differs from the trademarks only by the addition of the geographical term “America” and the gTLD “.com”. The addition of the gTLD suffix does not dispel confusion. The gTLD of the disputed domain name is to be ignored for the purposes of assessing confusing similarity as it is a functional requirement of the domain name system, which is the common view of UDRP panelists and held in earlier cases such as DHL Operations B.V. v. DHL Packers, WIPO Case No. D2008-1694; Telstra Corporation Limited v. Ozuris, WIPO Case No. D2001-0046; Ticketmaster Corporation v. DiscoverNet, Inc., WIPO Case No. D2001-0252; Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493.

The additional term “America” is a geographical term indicating a continent. It is common practice for companies operating in various countries or continents to indicate the particular graphical area by combining their company name or trademark with the country name, thereby enabling the Internet user to immediately identify the website of the company offering the goods or services particularly for the country of residence of the Internet user. For this reason, the Panel concludes that the geographical term “America” is solely descriptive. The use of the added geographical term does not change the overall impression of the domain name as being dominated by the “IQOS” mark and does not serve to distinguish the disputed domain name from the Complainant’s mark (See Microsoft Corporation v. Hassan Pennock, WIPO Case No. D2005-1020; Dell Inc. v. DI_4747995, WIPO Case No. D2007-0803; The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0113).

Hence, the disputed domain name is confusingly similar to the Complainant’s trademark IQOS.

In view of the above, the Panel finds that neither the added gTLD “.com” nor the added geographical term “America” do not prevent a finding of confusing similarity under the first element.

Therefore, the Panel finds that the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

It is established case law that it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name in order to place the burden of production on the Respondent (See Credit Agricole S.A. v. Dick Weisz, WIPO Case No. D2010-1683; Champion Innovations, Ltd. v. Udo Dussling (45FHH), WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).

The Panel notes that the Respondent has not been commonly known by the disputed domain name and that, according to the Complainant, the Respondent has not acquired trademark or service mark rights. The Respondent’s use and registration of the disputed domain name was not authorized by the Complainant.

The website at the disputed domain name offers for sale the Complainant’s products under the banner “Welcome to IQOS life style”. Moreover, the Panel is of the opinion that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, in particular as regards the use of the disclaimer. It is established case law that the use of a disclaimer can have a positive effect on the examination of good faith (See Dr. lng. h.c. F. Porsche AG v. Gaurav Khanna, Carnity, WIPO Case No. D2014-1618; LEGO Juris A/S v. Andrew Orr, WIPO Case No. D2015-1311; Carrefour v. Whois Agent, Whois Privacy Protection Service Inc. / Andres Saavedra, WIPO Case No. D2016-0608; Thirty & Co. v. Jake Marcum, Marcum Creative, LLC, WIPO Case No. D2016-1212). However, this presupposes that the disclaimer must be sufficiently clear and prominent. Where the overall circumstances indicate bad faith, a disclaimer cannot cure it. This applies all the more if the disclaimer - as in the present case - is hidden inconspicuously on the website. Hence, the Panel is of the opinion that the disclaimer cannot eliminate bad faith.

Considering the above, the Panel finds that the Complainant has established a prima facie case that the Respondent lacks any rights and legitimate interests in the disputed domain name.

Hence, the burden of production is on the Respondent. In such case, the Respondent must by substantial evidence demonstrate its rights or legitimate interests in the disputed domain name in order to refute the prima facie case. The Respondent has made no such showing.

Consequently, the Panel finds that the Respondent’s default in refuting the prima facie case made by the Complainant is sufficient to establish a lack of rights or legitimate interests of the Respondent in the disputed domain name.

C. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, a Complainant has to establish that a Respondent registered and used the disputed domain name in bad faith.

Whether a domain name is used in bad faith for purposes of the Policy may be determined by evaluating the five factors set forth in the Policy:

(i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name;

(ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct;

(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor;

(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’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 registrant’s website or location or of a product or service on the registrant’s website or location.

The Complainant has brought evidence that its trademarks are widely known to a substantial part of consumers due to intense use and trade activities made under the trademark, which has not been contested by the Respondent. The Panel therefore assumes that the Respondent was well aware of the IQOS trademarks when it registered and the disputed domain name.

The Panel also notes that the Respondent has falsely endorsed the online shop with the IQOS and related HEETS trademarks of the Complainant, thereby creating the impression that the online shop under <iqosamerica.com> is affiliated to the Complainant. Moreover, the disputed domain name suggests that it resolves to a website operated or otherwise authorized by the Complainant in relation to its tobacco goods. Therefore, Internet users would suppose that the disputed domain name refers to a website of or authorized by the Complainant In the absence of a response by the Respondent, the Panel assumes that the Respondent, for commercial gain, wanted to attract Internet users to its website through creating a likelihood of confusion.Some users will believe that there is a connection between the Complainant and the disputed domain name and thus be lead to purchase goods in the Respondent’s online shop.Like the Complainant correctly noted, the use of a privacy protection service additionally indicates bad faith.

According to the foregoing, the Panel comes to the conclusion that the disputed domain name has been registered and is being used in bad faith in the accordance with paragraph 4(b)(iv) of the Policy.

7. Decision

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

Andrea Jaeger-Lenz
Sole Panelist
Date: January 31, 2019