Philip Morris Products S.A. v Saeed Farahani, Persian Art

WIPO Case No. D2022-0238

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Saeed Farahani, Persian Art

Case No. D2022-0238

1. The Parties

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

The Respondent is Saeed Farahani, Persian Art, India.

2. The Domain Name and Registrar

The disputed domain name <iqosisland.com> is registered with Web Commerce Communications Limited dba WebNic.cc (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 25, 2022. On January 25, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 25, 2022, 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 February 2, 2022 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 February 3, 2022.

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 Respondent of the
Complaint, and the proceedings commenced on February 7, 2022. In accordance with the Rules, paragraph
5, the due date for Response was February 27, 2022. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on March 8, 2022.

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The Center appointed Nayiri Boghossian as the sole panelist in this matter on March 22, 2022. 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 Group (“Group”), a leader in the field of tobacco which has been in operation since 1972. The Group has developed Reduced Risk Products amongst which is the IQOS system, which was launched in 2014. The brand HEETS and other brands are used with respect to cigarette sticks that are developed according to the IQOS system.

The Complainant owns many trademark registrations for IQOS such as:

- International trademark registration No. 1461017 for IQOS as a device registered on January 18, 2019

- International trademark registration No. 1218246 for IQOS registered on July 10, 2014

The disputed domain name was registered on December 5, 2021. The disputed domain name resolves to a
webpage which offers IQOS branded products, electrical cigarettes, accessories featuring many of the

Complainant’s trademarks such as PARLIAMENT and HEETS. Other unbranded products are also offered.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant owns the trademark IQOS and has registered it in many countries. The disputed domain name incorporates the Complainant’s trademark in its entirety. The dispute domain name includes the word “island”. The addition of descriptive, generic or geographical words to a trademark in a domain name does not prevent a finding of confusing similarity. The generic Top-Level Domain (“gTLD”) “.com” should typically be ignored. The website to which the disputed domain name resolves creates an impression of association with the Complainant which is exacerbated by the use of the Complainant’s product images and marketing material.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not authorized or licensed by the Complainant to use its trademark. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. On the contrary, the Respondent is attempting to obtain unfair commercial gain through misleading consumers. The Respondent is not an authorized reseller or distributor of the Complainant. The website of the Respondent is selling competing products. For a reseller or a distributor to make a bona fide offering of goods or services, the Respondent must meet the Oki Data test which is not met in the instant case as the website offers competing products. Furthermore, the disputed domain name suggests affiliation with the Complainant and hence there can be no fair use. Lastly, the Respondent claims to be a sales representative of the Complainant.

The Complainant contends that the disputed domain name was registered and is being used in bad faith.
The Respondent knew of the Complainant’s trademark as the disputed domain name incorporates the
Complainant’s trademark and the trademark IQOS is purely imaginative. The disputed domain name was
registered with the intent to mislead consumers for commercial gain by creating confusion with the
Complainant’s trademark and products. The Respondent is selling third party products through its website.

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B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant owns trademark registrations for IQOS. The Panel is satisfied that the Complainant has established its ownership of the trademark IQOS.

It is established by prior UDRP panels that when a domain name incorporates a complainant’s registered Complainant’s trademark IQOS in its entirety. The word “island” does not alter the fact that the disputed domain name is confusingly similar to the Complainant’s trademark. The generic Top-Level Domain “.com” should generally be ignored when assessing confusing similarity as established by prior UDRP decisions.

trademark, such incorporation is sufficient to establish identity or confusing similarity for the purposes of the
Policy even if other words are added as part of the disputed domain name. E.g., Oki Data Americas, Inc v.
Consequently, the Panel finds that the disputed domain name is confusingly similar to the trademark of the

Complainant and that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a respondent does not have any rights or legitimate interests in the disputed domain name. Once such showing is made, the burden of production shifts to the respondent. In the instant case, the Complainant

asserts that the Respondent is not affiliated with nor authorized by the Complainant to use its trademark.
The Respondent should prove that it has rights or legitimate interests.

According to the Policy, the use of the disputed domain name would be legitimate if it is used in connection with a bona fide offering of goods or services. The website to which the disputed domain name resolves offers products of the Complainant. Therefore, there may be an argument that the disputed domain name is being used in connection with a bona fide offering of products. In line with the Oki Data test, a number of requirements have to be met (see Oki Data, supra):

1. “Respondent must actually be offering the goods or services at issue”;
2. “Respondent must use the site to sell only the trademarked goods”;
3. “The site must accurately disclose the registrant’s relationship with the trademark owner”; and
4. “The Respondent must not try to corner the market in all domain names, thus depriving the trademark

owner of reflecting its own mark in a domain name”.

The Panel analyzes each of these requirements below:

- Requirement No. 1: This requirement is met.
- Requirement No. 2: This requirement is not met in the instant case as the disputed domain name
resolves to a website which offers Complainant’s products together with other products or accessories
which are not branded.
- Requirement No. 3: This requirement is not met as the website does not include a statement
demonstrating that it does not belong or is not affiliated with the Complainant. On the contrary, it
states that it is the reseller of the Complainant, which is denied by the Complainant.
- Requirement No. 4: This requirement is met as there are no numerous registrations by the
Respondent of domain names containing the trademark of the Complainant.

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Requirements No. 2 and 3 have not been met. Therefore, it is the Panel’s view that the requirements of the Oki Data test have not been met.

Consequently, the Panel finds that the Complainant has met the requirement under the Policy of showing
that the Respondent does not have any rights or legitimate interests in the disputed domain name.

Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Respondent clearly knew of the Complainant’s business and trademark as the disputed domain name resolves to a website offering the products of the Complainant. The nature of the disputed domain name suggests affiliation with the Complainant as it incorporates the Complainant’s trademark in full. The display of multiple trademarks belonging to the Complainant together with product images reinforces the impression that the disputed domain name is affiliated with the Complainant.

The disputed domain name resolves to a website, which offers the Complainant’s products. It offers other products of the same nature as well. Offering competing products is an indication of bad faith use. As such, the disputed domain name suggests affiliation with the Complainant in order to attract consumers and offer competing services. This is an act of bad faith (see Intex Recreation Corp. v. RBT, Inc., Ira Weinstein, WIPO Case No. D2010-0119; MasterCard International Incorporated v. Global Access, WIPO Case No. D2008-1940).

Such conduct falls squarely within the meaning of paragraph 4(b)(iv) of the Policy, and accordingly, the

Panel finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy.

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 <iqosisland.com> be transferred to the Complainant.

/Nayiri Boghossian/
Nayiri Boghossian
Sole Panelist
Date: March 28, 2022