Philip Morris Products S.A. v Saeed Sarbandi Farahani, Persian ART

WIPO Case No. DIR2022-0003

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Saeed Sarbandi Farahani, Persian ART

Case No. DIR2022-0003

1. The Parties

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

Respondent is Saeed Sarbandi Farahani, Persian ART, Iran (Islamic Republic of).

2. The Domain Name and Registrar

The disputed domain name <tehiqos.ir> (the “Domain Name”) is registered with IRNIC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 11, 2022. On February 11, 2022, the Center transmitted by email to IRNIC a request for registrar verification in connection with the Domain Name. On February 12, 2022, IRNIC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the .ir Domain Name Dispute
Resolution Policy (the “Policy” or “irDRP”), the Rules for .ir Domain Name Dispute Resolution Policy
(the “Rules”), and the WIPO Supplemental Rules for .ir Domain Name Dispute Resolution Policy (the

“Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the
Complaint, and the proceedings commenced on February 17, 2022. In accordance with the Rules,
paragraph 5(a), the due date for Response was March 9, 2022. On March 10, 2022, the Center notified

Respondent’s default.

The Center appointed Marina Perraki as the sole panelist in this matter on March 14, 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.

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4. Factual Background

Complainant is part of the Philip Morris International Inc. group of companies (“PMI group”), active in the tobacco industry, with products sold in approximately 180 countries. PMI group has been transforming its business from combustible cigarettes to Reduced Risk Products (“RRP”), which PMI group defines as products that present, are likely to present, or have the potential to present less risk of harm to smokers who switch to those products versus continued smoking. One of these products, developed and sold by PMI group, is a tobacco heating system branded as IQOS. IQOS is a controlled heating device into which specially designed tobacco sticks under the brand names “HEETS”, “HeatSticks”, or “TEREA” are inserted and heated to generate a flavourful nicotine-containing aerosol (together “the IQOS System”). IQOS was first launched by PMI group in 2014. Today the IQOS System is available in approximately 66 markets across the world. Per Complainant, PMI group has invested USD 8.1 billion into the science and research of developing smoke-free products and extensive international sales and as a result the IQOS brand has gained considerable international reputation, with almost 19.1 million users. Per Complaint, the IQOS System products have been almost exclusively distributed through PMI group’s official IQOS stores and websites and selected authorized distributors and retailers, while they are not sold in Iran (Islamic Republic of).

Complainant is the owner of numerous IQOS trademark registrations. These include:

- International registration No. 1218246 (word mark), registered on July 7, 2014, designating, inter alia,

European Union, Egypt, Bahrain, and Oman, for goods in International Classes 9, 11, and 34; and

- International registration No. 1329691 (word and device mark), registered on August 10, 2016, designating,
inter alia, European Union, Egypt, Bahrain, and Oman, for goods in International Classes 9, 11, and 34.

The Domain Name was registered on October 27, 2021, and resolves to a website (the “Website”), which is an online shop, allegedly offering for sale Complainant’s IQOS System, repair and maintenance services for Complainant’s IQOS System, competing third party products of other commercial origin, as well as a third

party product which infringes Complainant’s IQOS trademark. On the Website, the IQOS and other of the online shop provider, while a copyright notice at the bottom of the Website claims copyright on the material presented on the Website.

trademarks and logos of Complainant, as well as a number of Complainant’s official product images and
marketing materials, are prominently displayed. Complainant’s IQOS trademark appears at the top of the

The Website is in Persian language. It indicates all prices in Iranian toman (نﺎﻣوﺗ) currency and includes the address located in Tehran, Iran (Islamic Republic of). All this suggest that the Website is addressed to Iranian consumers, however Complainant’s IQOS System is not currently sold in Iran (Islamic Republic of). The Website does not show any details regarding the provider of the Website other than the infringing indication of Complainant’s trademark “Tehran Iqos” nor does it acknowledge Complainant as the brand owner of the IQOS System.

5. Parties’ Contentions
A. Complainant

Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

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6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the

Domain Name:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant

has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered or is being used in bad faith.

A. Identical or Confusingly Similar

Complainant has demonstrated rights through registration and use on the IQOS mark.

The Panel finds that the Domain Name, which incorporates Complainant’s IQOS mark in its entirety plus an additional abbreviation of a geographical term, namely that of the capital of Iran (Islamic Republic of) “teh”, is confusingly similar to the IQOS trademark of Complainant. The addition of the term “teh” does not prevent a finding of confusing similarity.

The country code Top-Level Domain (“ccTLD”) “.ir” is disregarded, as ccTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons only (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275). 1

Complainant has established Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the

Domain Name, among other circumstances, by showing any of the following elements:

(i) before any notice to Respondent of the dispute, Respondent’s use of, or demonstrable preparations to
use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering

of goods or services; or

(ii) Respondent (as an individual, business, or other organization) has been commonly known by the Domain

Name, even if it has acquired no trademark or service mark rights; or

(iii) Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for

commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name.

Respondent has not submitted any response and has not claimed any such rights or legitimate interests with
respect to the Domain Name. As per Complaint, Respondent was not authorized to register the Domain

Name.

Prior to the notice of the dispute, Respondent did not demonstrate any use of the Domain Name or a

1 The Panel follows prior decisions under the irDRP and, given the similarities between the irDRP and the Uniform Domain Name

Resolution Policy (“UDRP”), finds it appropriate to refer to UDRP jurisprudence, including reference to the WIPO Overview of WIPO
Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). See Inter IKEA Systems BV (IISBV) v.
Mohammadreza Mohammadian, WIPO Case No. DIR2018-0003.

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trademark corresponding to the Domain Name in connection with a bona fide offering of goods or services.

On the contrary, as Complainant demonstrated, the Domain Name resolved at the time of filing of the of Complainant.

Per Complaint, Respondent is not an affiliated entity or an authorised distributor or reseller of Complainant
and no agreement, express or otherwise, exists allowing the use of Complainant’s trademarks on the

Website and the use of the Domain Name by Respondent.

Further, per Complaint, Complainant’s IQOS branded products are not sold in Iran (Islamic Republic of).

A distributor or reseller can be making a bona fide offering of goods and thus have a legitimate interest in a domain name only if the following cumulative requirements are met (Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.8.1: (i) respondent must actually be offering the goods at issue; (ii) respondent must use the site to sell only the trademarked goods; (iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and (iv) respondent must not try to “corner the market” in domain names that reflect the trademark.)

These requirements are not cumulatively fulfilled in the present case. The Domain Name falsely suggested that the Website is an official site of Complainant or of an entity affiliated to or endorsed by Complainant. The Website extensively reproduced, without authorization by Complainant, Complainant’s trademark, without any disclaimer of association (or lack thereof) with Complainant.

Furthermore, the use of a domain name which intentionally trades on the fame of another and suggests affiliation with the trademark owner cannot constitute a bona fide offering of goods or services (Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847; AB Electrolux v.

Handi Sofian, Service Electrolux Lampung, WIPO Case No. D2016-2416; WIPO Overview 3.0, section 2.5).

Furthermore, as Complainant has demonstrated, the Website also offers for sale a third party product that
infringes the Complainant’s trademark, as well as competing third party products and / or accessories. The
Website furthermore creates the false impression that Complainant has officially introduced the IQOS
System into the Iranian market.

The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name.

Complainant has established Policy, paragraph 4(a)(ii).

C. Registered or Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for
the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is
the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration

in excess of its documented out of pocket costs directly related to the Domain Name; or

(ii) Respondent 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 Respondent has engaged in a

pattern of such conduct; or

(iii) Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a

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competitor; or

(iv) by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, location or of a product or service on Respondent’s website or location.

Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with
The Panel concludes that Respondent has registered and used the Domain Name in bad faith. As per
Complaint, Complainant’s IQOS trademark is well known for RRP smoking devices. Furthermore, “iqos” is a
fictitious word. Because the IQOS mark had been widely used and registered at the time of the Domain
Name registration by Complainant, the Panel finds it more likely than not that Respondent had
Complainant’s mark in mind when registering the Domain Name (Tudor Games, Inc. v. Domain Hostmaster,
Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis
Inc., WIPO Case No. D2014-1754; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net,

WIPO Case No. D2000-0226).

As regards bad faith use of the Domain Name, Complainant has demonstrated that the Domain Name was
used to create the Website, which prominently displays Complainant’s registered trademarks, logos, and
official product images and marketing material, thereby giving the false impression that it is operated by
Complainant or a company affiliated to Complainant or an authorised dealer of Complainant. The Domain
Name operates therefore by intentionally creating a likelihood of confusion with Complainant’s trademark
and business as to the source, sponsorship, affiliation or endorsement of the website it resolves to. This can
be used in support of bad faith registration and use (Booking.com BV v. Chen Guo Long, WIPO Case No.
D2017-0311; Ebel International Limited v. Alan Brashear, WIPO Case No. D2017-0001; Walgreen Co. v.
Muhammad Azeem / Wang Zheng, Nicenic International Group Co., Limited, WIPO Case No. D2016-1607;
Oculus VR, LLC v. Sean Lin, WIPO Case No. DCO2016-0034; and WIPO Overview 3.0, section 3.1.4).

The bad faith use of Respondent is further indicated by the fact that the Website creates the false impression that Complainant offers for sale its IQOS products in Iran (Islamic Republic of), while it is not.

The Panel considers the following factors: (i) the reputation of Complainant’s mark, (ii) the failure of Respondent to submit a response, (iii) the fact that the Website displays not only Complainant’s IQOS and other trademarks and logos but also Complainant’s official product images and marketing material without authorisation, while it also offers for sale competing products and accessories of Complainant’s competitors as well as a false accessory of Complainant’s own IQOS system, and (iv) the implausibility of any good faith use to which the Domain Name may conceivably be put, given that, as Complainant has demonstrated, the Domain Name resolves to the Website which gives the false impression that it is operated by Complainant or an official retailer of Complainant and that the IQOS Products are offered for sale in Iran (Islamic Republic of).

Under these circumstances and on this record, the Panel finds that Respondent has registered and is using the Domain Name in bad faith.

Complainant has established Policy paragraph 4(a)(iii).

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 <tehiqos.ir> be transferred to Complainant.

/Marina Perrak i/
Marina Perraki
Sole Panelist
Date: March 28, 2022