Philip Morris Products S.A. v Jamal Hosseini

WIPO Case No. D2024-1815

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Jamal Hosseini

Case No. D2024-1815

1. The Parties

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

The Respondent is Jamal Hosseini, Armenia.

2. The Domain Name and Registrar

The disputed domain name <iqosorigin.com> is registered with CSL Computer Service Langenbach GmbH dba Joker.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 30, 2024.
On May 1, 2024, the Center transmitted by email to the Registrar a request for registrar verif ication in
connection with the disputed domain name. On May 3, 2024, the Registrar transmitted by email to the
Center its verif ication response disclosing registrant and contact information for the disputed domain name
which differed from the named Respondent (Private Registration) and contact information in the Complaint.
The Center sent an email communication to the Complainant on May 7, 2024, providing the registrant and
contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the

Complaint. The Complainant f iled an amended Complaint on May 9, 2024.

The Center verif ied that the Complaint together with the amended Complaint satisf ied 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 notif ied the Respondent of the Complaint, and the proceedings commenced on May 14, 2024. In accordance with the Rules, paragraph 5, the due date for Response was June 3, 2024. The Respondent did not submit any response. Accordingly, the Center notif ied the Respondent’s default on June 7, 2024.

The Center appointed Áron László as the sole panelist in this matter on June 17, 2024. The Panel f inds 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.

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4. Factual Background

The Complainant and its related companies are a group of companies specialising in the sale of tobacco products. The Complainant group has sales in 180 countries and sells one of the leading tobacco brands such as MARLBORO. The Complainant group has developed a number of products described as Reduced Risk Products (“RRP”), i.e., products that are said to be less harmful to the smoker than traditional

combustible cigarettes. One of the Complainant group’s RRPs is IQOS, which is a heating device into which tobacco products under the brand names HEETS and TEREA are inserted. The IQOS system was f irst launched in Japan in 2014 and is available in 71 markets around the world. The IQOS system is sold almost exclusively through the group’s of f icial stores and selected authorised distributors and retailers.

The Complainant is the owner of a number of registrations of the IQOS mark, including:

- International Registration No. 1218246 of IQOS (word), registered on July 10, 2014, amongst others
for goods in International Class 34 (tobacco products); and

- International Registration No. 1338099 of IQOS (device mark) registered on November 22, 2016, for services in International Class 35 (advertising, marketing, commercialization, promotion and retail services (including online retail services of heated tobacco products);

- and many more trademarks around the world.

The Complainant owns the domain name <iqos.com>.

The disputed domain name was registered on January 12, 2024. There is currently no content available under the disputed domain name.

The disputed domain name was previously associated with an online store that allegedly sold and offered the Complainant’s IQOS System in Iran. The website made extensive use of the IQOS trademarks, related logos and the Complainants other trademarks. The online store contained links to various social media accounts that also used the IQOS trademarks and logos. The website used a number of the Complainant’s of ficial product images and marketing materials without the 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. The website did not identify the provider of the website and did not recognize the Complainant as the brand owner of the IQOS System.

The IQOS system is not currently available for sale in Iran (Islamic Republic of ).

The identity of the Respondent was originally masked by a privacy service. The Respondent is a private individual with an address in Yerevan, Armenia.

5. Parties’ Contentions
A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends that the disputed domain name is confusingly similar to the addition of the word “origin”.

Moreover, the Complainant contends that there are no rights or legitimate interests held by the Respondent in respect of the disputed domain name. The Respondent is not commonly known as the disputed domain name nor does the Respondent have any authorization from the Complainant to register the disputed domain name.

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The Respondent is not making a legitimate noncommercial fair use of the disputed domain name. On the contrary, the Respondent’s behaviour shows a clear intention to obtain unfair commercial advantage by misleading consumers or tarnishing the Complainant’s trademarks. Firstly, the Respondent is not an

authorised distributor or reseller of the IQOS System. Second, the website hosted at the disputed domain name does not meet the requirements of bona fide offering of goods set forth in numerous panel decisions, the leading case being Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.

The requirements of the bona fide offering of goods set forth in the Oki Data decision are not met. The website hosted under the disputed domain name suggests an af f iliation with the Complainant. The IQOS trademark is fully incorporated in the disputed domain name, the website reproduces the IQOS trademark and logos, uses the Complainant’s official product images and marketing materials while claiming copyrights for the same. The website shows no information regarding the identity of the provider other than displaying the name Iqos Origin. The Complainant’s IQOS System is primarily distributed through official and endorsed stores therefore Internet users are here misled regarding the relationship between the Respondent’s website and the Complainant, and will falsely believe that the website under the disputed domain name belongs to an of ficial or endorsed distributor, while the IQOS System is currently not available for sale in Iran. This false impression is enforced by a false statement on the website claiming that the provider is an Iqos product sale agent in Iran (Islamic Republic of ).

Finally, it is evident from the Respondent’s use of the disputed domain name that the Respondent was aware of the Complainant’s distinctive IQOS trademark when it registered the disputed domain name. It is also evident from the Respondent’s use of the disputed domain name that the Respondent registered and used it with the intention of attracting Internet users to the website for commercial gain by creating a likelihood of confusion with the Complainant’s registered IQOS trademark as to the source, sponsorship, af f iliation, or endorsement of its website or location or of a product or service on its website or location, which is supported by the Respondent’s use of the Complainant’s official product images on the website. Also, the fact that the Respondent uses a privacy protection service to hide its true identity may in itself be a factor indicating bad faith.

B. Respondent

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

6. Discussion and Findings

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

Paragraph 4(a) of the Policy requires that a complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(i) the domain name registered by the respondent 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 domain name; and

(iii) the domain name has been registered and is being used in bad faith.

In view of the Respondent’s failure to submit a Response, the Panel shall decide this administrative
proceeding on the basis of the Complainant’s undisputed representations pursuant to paragraphs 5(f ), 14(a)
and 15(a) of the Rules and draw such inferences as it considers appropriate pursuant to paragraph 14(b) of
the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint. However, the
Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. WIPO
Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section
4.3.

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A. Identical or Confusingly Similar

It is well accepted that the f irst element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview 3.0, section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The Panel f inds the mark is recognizable within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms, here, the descriptive term “origin” may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a f inding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy.

WIPO Overview 3.0, section 1.8.

The Panel f inds the f irst element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is of ten primarily within the knowledge or control of the respondent. As such, 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 (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisf ied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

Although the disputed domain name currently does not link to any content, previously it related to a website allegedly offering the Complainant’s goods for consumers in Iran (Islamic Republic of). Therefore, the main question is whether this of fering of goods was made in good faith.

Generally speaking, UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation. Even where a domain name consists of a trademark plus an additional term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. WIPO Overview 3.0, section 2.5.1.

In this case, the disputed domain name contains the term “origin” in addition to the Complainant's trademark IQOS, where “origin” as a reference to “original” implies a certain af f iliation with the trademark owner, the Complainant. This is further reinforced by the fact that the website reproduces the IQOS trademark and logos and uses the Complainant’s official product images and marketing materials. This false impression is

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reinforced by a false statement on the website that the Respondent is an agent for the sale of IQOS products
in Iran (Islamic Republic of ).

Furthermore, the Complainant’s IQOS system is not sold in general stores or shops, but is primarily sold through official and endorsed stores. Therefore, users searching for IQOS products could more easily be misled as to the relationship between the website and the Complainant and could mistakenly believe that the website under the disputed domain name belongs to an of f icial or endorsed distributor. The fact that the IQOS System is not available for sale in Iran (Islamic Republic of ) makes the legality of the website

questionable.

On the other hand, the website shows no information regarding the identity of the provider other than displaying the name IQOS ORIGIN. Moreover, the website does not clarify to Internet users visiting the Respondent’s website that it is not operated by the Complainant (WIPO Overview 3.0, section 2.5.2.). Again, the Respondent failed to rebut the Complainant’s prima facie case and to show the bone f ide nature of its of fering goods on its website.

The Panel f inds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

In the present case, the Panel notes that the Respondent was aware of the Complainant’s IQOS trademark when it registered the disputed domain name. The term “IQOS” is purely fanciful and unique to the Complainant. The term “IQOS” is not commonly used to refer to tobacco products or electronic devices. It is therefore inconceivable that the Respondent would have chosen the disputed domain name without the intention of creating a misleading association with the Complainant.

It is also apparent from the Respondent’s use of the disputed domain name that the Respondent used it with the intention of attracting Internet users to the website for commercial gain by creating a likelihood of confusion with the Complainant’s registered trademark IQOS as to the source, affiliation or endorsement of its website, which constitutes bad faith under paragraph 4(b)(iv) of the Policy.

By reproducing the Complainant’s registered trademark in the disputed domain name and in the title of the website, the Respondent clearly suggests to any Internet user who visits the website hosted under the disputed domain name that the Complainant (or an affiliate of the Complainant) is the source of the website, which it is not. This suggestion is further reinforced by the Respondent’s use of the Complainant’s of f icial product images and marketing materials accompanied by a copyright notice claiming copyright in the website and its content.

Finally, the fact that the Respondent uses a privacy service to conceal its true identity is a further factor indicating bad faith (see WIPO Overview 3.0, section 3.6).

The Panel f inds that the Complainant has established the third element of the Policy.

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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 <iqosorigin.com> be transferred to the Complainant.

/Áron László/ Áron László Sole Panelist Date: July 1, 2024