Philip Morris Products S.A. v. WhoisGuard, Inc.
Claim Number: FA1911001872447
Complainant: Philip Morris Products S.A. of Neuchâtel, Switzerland.
Complainant Representative:
Complainant Representative: DM KISCH INC of Sandton, South Africa.
Respondent: WhoisGuard, Inc. of Panama.
Respondent Representative: «cFirstName» «cMiddle» «cLastName»
REGISTRIES and REGISTRARS
Registries: Afilias Limited.
Registrars: NameCheap, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Examiner in this proceeding.
Jonathan Agmon, as Examiner.
Complainant submitted: November 22, 2019
Commencement: December 2, 2019
Default Date: December 17, 2019
Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules").
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
Complainant is an international tobacco company, with products sold in more than 180 markets worldwide. IQOS, a tobacco device, was launched in Japan, in 2014. Today due to extensive international sales and marketing efforts, the IQOS product is sold in around 51 markets. IQOS is an electronic heating device into which specially designed tobacco sticks (branded “HEETS” or “HeatSticks”) are inserted and heated to generate a nicotine containing aerosol. “IQOS” and “HEETS” are not ordinary dictionary words or generic.
Complainant owns numerous trademark registrations for IQOS and HEETS, covering numerous jurisdictions, including Swiss Registration IQOS (word) No. 660918.
Complainant asserts the following against the Respondent:
1. The registered domain name is identical or confusingly similar to a word or mark [URS 1.2.6.1]: for which the Complainant holds a valid national or regional registration and that is in current use;
2. Registrant has no legitimate right or interest to the domain name [URS 1.2.6.2];
3. The domain name was registered and are being used in bad faith [URS 1.2.6.3] such as: Registrant has registered or 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 documented out-of-pocket costs directly related to the domain name; Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s web site or location or of a product or service on that web site or location.
Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.
[URS
1.2.6.1] The registered domain name(s) is/are identical or confusingly similar
to a word mark:
(i) for which the Complainant holds a valid national or regional registration
and that is in current use; or
(ii) that has been validated through court proceedings; or
(iii) that is specifically protected by a statute or treaty in effect at the
time the URS complaint is filed.
Determined: Finding for Complainant
Complainant is the owner of the Swiss IQOS mark no. 660918 which was registered on 1 May 2014.
The domain name includes the Complainant's mark in its entirety, together with the gTLD ".pro" and the letters “ucuz”, which have no apparent meaning.
[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.
Determined: Finding for Complainant
The Complainant has not authorized Respondent to use its IQOS mark. The Respondent is not commonly known by the registered domain name.
[URS 1.2.6.3] The domain name(s) was/were registered and is being used in bad faith. a. Registrant has registered or 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 documented out-of-pocket costs directly related to the domain name; b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; c. Registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant's web site or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of Registrant's web site or location or of a product or service on that web site or location.
Determined: Finding for Complainant
The Complainant provided evidence showing a webpage under the Disputed Domain Name which appears to offer and sell counterfeit goods of the Complainant at a discounted price. The evidence provided clearly shows that the Respondent is attempting to attract internet users looking for Complainant’s goods, and purposefully misleading users as to the source of the website. By using Complainant’s trademark in the Disputed Domain and hiding the identity of the website provider, Respondent is purposefully misleading users as to the source, sponsorship, or endorsement of the offerings under the Disputed Domain. The evidence provided clearly shows that the Respondent was targeting the Complainant. Given the clear and convincing evidence filed by the Complainant, the conclusion is that the disputed domain name was registered and is being used in bad faith to disrupt the business of the Complainant and creating a likelihood of confusion with the Complainant’s mark and that Complainant has complied with URS 1.2.6.3 (c) and (d).
After reviewing the Complainant’s submissions, the Examiner determines that
the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain names be SUSPENDED for the duration of the registration.
<ucuziqosheets.pro>
Jonathan Agmon, Examiner
Dated: December 20, 2019
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