Philip Morris Products S.A. v. Domains By Proxy, LLC
Claim Number: FA2205001998049
Complainant: Philip Morris Products S.A. of Neuchâtel, International, Switzerland.
Complainant Representative:
Complainant Representative: DM KISCH INC of Sandton, International, South Africa.
Respondent: Registration Private / Domains By Proxy, LLC of Tempe, Arizona, US.
Respondent Representative: «cFirstName» «cMiddle» «cLastName»
REGISTRIES and REGISTRARS
Registries: One.com A/S
Registrars: GoDaddy.com, LLC
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.
James Bridgeman, as Examiner.
Complainant submitted: May 26, 2022
Commencement: May 27, 2022
Default Date: June 13, 2022
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 company that manufactures and sells a nicotine delivery device under the IQOS trademark for which it owns Swiss trademark registration IQOS (word) No. 660918, registered don May 1, 2014 for goods and services in classes 9, 11 and 34.
The disputed domain name was registerd on 14 March 2022 and is being used as an address for a website that sells unrelated third party products.
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.
This Examiner accepts Complainant’s submissions that it is an international tobacco company and manufacturer of an electronic heating, nicotine delivery device which it markets using the IQOS mark and is sold in around 71 markets across the world which is sufficient to prove actual use of the trademark (URS Rule 8.1.2.1).
The disputed domain name was registered on 14 March 2022 and is used for a website advertising and selling unrelated third-party products, which Respondent holds out to be an officially endorsed dealer of Complainant by prominently using Complainant’s IQOS trademark in the domain name and at the top of the website, where internet users usually expect to find the name of the online shop or website owner.
Respondent’s website reveals no information regarding the identity of the website provider nor does it acknowledge Complainant as the real brand owner. Complainant has exhibited screen captures of the website which has been translated with Google Translate.
This leaves internet users under the false impression that the website is owned by Complainant or one of its official licensees. Respondent has posted a copyright notice specifically stating “IQOS online shop ©“ on the website to which the disputed domain name resolves.
Complaint asserts that neither Respondent and the website to which the disputed domain name resolves are not in any way affiliated to Complainant nor has Complainant authorized Respondent’s registration and use of the disputed domain name (URS Rule 1.2.6.2).
This Panel accepts Complainant’s arguments that by registering a domain name comprising of Complainant’s IQOS trademark and prominently using Complainant’s IQOS trademark on the website, as well as a copyright notice specifically stating “IQOS online shop ©“, Respondent is clearly attempting to attract internet users looking for Complainant’s goods, and purposefully misleading users as to the source of the website.
Also by using Complainant’s IQOS trademark in the disputed domain name 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 name.
Such use of the IQOS trademark by the Respondent while it conceals its identity, does not constitute a “bona fide offering” pursuant to the “OKI Data Principles” and unquestionably demonstrates bad faith.
This Panel accepts Complainant’s submissions that Respondent is intentionally using Complainant’s IQOS trademark to confuse and attract customers to its site, while also offering products unrelated to Complainant – which in itself is sufficient to exclude a legitimate interest in the form of a bona fide offering of goods.
This Panel also accepts Complainant’s submissions that the evidence shows clearly and convincingly that Respondent is illegitimately and directly targeting Complainant and its trademarks. (URS Rule 1.2.6.3).
Having considered the Complaint and the exhibits annexed thereto this Panel finds that the disputed domain name is identical to the IQOS mark in which Complainant has rights.
Respondent has no legitimate right or interest to the domain name [URS/.usRS 1.2.6.2]
The disputed domain name was registered and is being used in bad faith [URS 1.2.6.3] because the registrant of the disputed domain name was clearly aware of Complainant’s very distinctive mark when the disputed domain name was chosen and registered long after Complainant had established registered rights, goodwill and a reputation in the IQOS mark for nicotine delivery devices.
Respondent is using the disputed domain name as an address of a website in an intentional attempted to attract for commercial gain, Internet users
to Respondent’s web site by creating a likelihood of confusion with Complainant’s
mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site.
After reviewing Complainant’s submissions, the Examiner determines that 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.
<iqos.one>
James Bridgeman, Examiner
Dated: June 15, 2022
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