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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Ahsan Habib

Case No. D2020-1321

1. The Parties

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

The Respondent is Ahsan Habib, Bangladesh.

2. The Domain Name and Registrar

The disputed domain name <heetsiqosdubai.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 25, 2020. On May 25, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 26, 2020, 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 June 10, 2020, 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 June 10, 2020.

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 June 12, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 2, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 3, 2020.

The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on July 9, 2020. 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 an international group of companies affiliated to Philip Morris International Inc., which is an international tobacco company, with products sold in approximately 180 countries, and a large brand portfolio including the worldwide reputed trademark MARLBORO. The Complainant and its group have developed various reduced risk products to substitute combustible cigarettes, one of them identified by the trademark IQOS, which was launched in Japan in 2014 and now is sold in 53 markets across the world. The product identified by the mark IQOS is a controlled heating device, collectively referred as IQOS System, consisting of a pocket charger specially designed to charge a specific holder, into which specially designed tobacco products (identified by the marks HEETS or HEAT STICKS) are inserted and heated to generate a flavorful nicotine-containing aerosol.

The Complainant holds a large portfolio of registered trademark rights in the marks IQOS and HEETS in many jurisdictions, including:

- United Arab Emirates Trademark No. 211139 IQOS, word mark, registered on March 16, 2016, in class 34;

- United Arab Emirates Trademark No. 256864 HEETS, word mark, registered on December 25, 2017, in class 34; and

- United Arab Emirates Trademark No. 256867 HEETS, figurative, registered on December 25, 2017, in class 34.

The disputed domain name was registered on March 7, 2020, and it is currently inactive resolving to a page with an Internet browser error message. However, according to evidence filed by the Complainant, it was previously linked to a website, in English language, allegedly offering for sale the Complainant’s IQOS System products, as well as competing third party accessories of other commercial origin. This website included in the left side of its heading, before the text content of the site, the words “Heets Iqos Dubai” in red color. This website included in its content a number of the Complainant’s official product images, indicated all prices in in United Arab Emirates dirham currency (AED) and did not show any details regarding its provider and/or its lack of relationship with the Complainant. This website contained a disclaimer located at the bottom of the site, after all the images of all offered products (each containing an option for adding the item to the cart). The said disclaimer indicated that “Heets Iqos Dubai have no affiliation with Philip Morris International (PMI), this is not official website of PMI and Iqos” all in capital letters in smaller size front, underneath the words “Heets Iqos Dubai” in red and bigger size front.

5. Parties’ Contentions

A. Complainant

Key contentions of the Complaint may be summarized as follows:

Through its intensive use and promotion, with a USD 6 billion investment, the trademark IQOS has achieved considerable international success and reputation with approximately 10 million relevant consumers. The IQOS System has been almost exclusively distributed through the Complainant’s IQOS stores and websites, as well as selected authorized distributors and retailers.

The disputed domain name reproduces the Complainant’s trademarks HEETS and IQOS in their entirety, with the addition of the geographical indication “Dubai”, which does not avoid confusing similarity. Any Internet user visiting a website provided under the disputed domain namewill reasonably expect to find a website commercially linked to the owner of the HEETS and IQOS marks. This unlawful association is amplified by the use of the Complainant’s official product images without authorization.

The Respondent lacks any rights or legitimate interests in the disputed domain name. The Complainant has not licensed or otherwise permitted the Respondent to use the trademarks HEETS and IQOS, and the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The Respondent’s behavior shows a clear intent to obtain an unfair commercial gain, with a view to misleadingly diverting consumers or to tarnish the Complainant’s trademarks. The website provided under the disputed domain name does not meet the requirements for a bona fide offering of goods by resellers or distributors established in, Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. This website is not only offering the Complainant’s products but also competing tobacco accessories of other commercial origin. The disputed domain name in itself and the content of the website linked to the disputed domain name suggest affiliation with the Complainant and its trademarks HEETS and IQOS. This website includes no information regarding the identity of its provider, and displays various Complainant’s official product images, as well as the HEETS and IQOS marks in a prominent position (with no authorization), which reinforces the false impression of an official commercial relationship with the Complainant. The likelihood of association is increased by the fact that the Complainant’s products are primarily distributed through official or endorsed distributors.

The disputed domain name was registered and is being used in bad faith. As the Respondent started offering the Complainant’s products immediately after registering the disputed domain name, it is evident the Respondent knew of the Complainant’s trademarks when registering the disputed domain name. Further, the terms “heets” and “iqos” are purely imaginative and unique, not being commonly used in the tobacco sector. The Respondent registered and used the disputed domain name with the intention to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant and its registered trademarks, which constitutes registration and use in bad faith pursuant to paragraph 4(b)(iv) of the Policy. The Respondent’s website clearly suggests the Complainant or an affiliated dealer of the Complainant as the source of the website. Furthermore, the fact that the Respondent is using a privacy protection service to hide its identity may in itself constitute a factor indicating bad faith.

The disclaimer contained in the website that was linked to the disputed domain name was not presented in a clear and sufficiently prominent manner. This disclaimer was likely (if at all) encountered by visitors to the website after their commercial decision to purchase the products offered on the site has already been made on the basis of a false affiliation with the Complainant. Said disclaimer was ambiguous and inaccurate, not correctly identifying the owners of the HEETS and IQOS marks, not indicating the lack of relationship between the provider of the website and these marks, and not mentioning the HEET mark. Such disclaimer may confirm that the Respondent cannot deny an awareness of the Complainant’s trademarks at the point of registration of the disputed domain name.

The Complainant has cited previous decisions under the Policy as well as various paragraphs of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) that it considers supportive of its position.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

The Complainant has made the relevant assertions as required by the Policy and the dispute is properly within the scope of the Policy. The Panel has authority to decide the dispute examining the three elements in paragraph 4(a) of the Policy, taking into consideration all of the relevant evidence, annexed material and allegations, and performing some limited independent research under the general powers of the Panel articulated, inter alia, in paragraph 10 of the Rules.

A. Identical or Confusingly Similar

In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered identical or confusingly similar to that mark for purposes of the Policy. In such cases, the addition of terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. It is further to be noted that the applicable generic Top-Level Domain (“gTLD”) in a domain name is considered a standard technical registration requirement and, as such, is generally disregarded under the first element confusing similarity test. See sections 1.7, 1.8, and 1.11.1, WIPO Overview 3.0.

The Complainant indisputably has rights in the registered trademarks HEETS and IQOS. The disputed domain name incorporates these marks in their entirety followed by the geographical term “Dubai”, which does not avoid confusing similarity with the trademark. The Complainant’s trademarks HEETS and IQOS are recognizable in the disputed domain name, and the gTLD “.com” is a technical requirement, generally disregarded for the purpose of the analysis of the confusing similarity. Accordingly, this Panel finds that the disputed domain name is confusingly similar to the Complainant’s marks, and the first element of the Policy under paragraph 4(a)(i) has been satisfied.

B. Rights or Legitimate Interests

Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the Respondent’s knowledge. Thus, the consensus view is that paragraph 4(c) of the Policy shifts to the Respondent the burden of production to come forward with relevant evidence of rights or legitimate interests in the disputed domain name, once the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests.

The Complainant’s assertions and evidence effectively shift the burden to the Respondent of producing evidence of rights or legitimate interests in the disputed domain name, providing the circumstances of paragraph 4(c) of the Policy, without limitation, that may establish rights or legitimate interests in the disputed domain name in order to rebut the Complainant’s prima facie case. However, the Respondent has not replied to the Complainant’s contentions, not providing any explanation and evidence of rights or legitimate interests in the disputed domain name.

It is to be noted that resellers or distributors, using a domain name containing the complainant’s trademark to undertake sales related to the complainant’s goods or services, may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name, if the following cumulative requirements are meet:

(i) the respondent must actually be offering the goods or services at issue;

(ii) the respondent must use the site to sell only the trademarked goods or services;

(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and

(iv) the respondent must not try to “corner the market” in domain names that reflect the trademark.

The analysis of these requirements is commonly known as the “Oki Data test” (referring to Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903). See section 2.8, WIPO Overview 3.0.

The evidence in the file shows the disputed domain name has been linked to a website, which commercialized alleged original HEETS and other IQOS System products as well as competing tobacco accessories of other commercial origin not prominently disclosing the lack of relationship with the Complainant. On the contrary, the content of this website leaded to create an affiliation with the Complainant and its HEETS and IQOS marks. This website contained the Complainant’s marks HEETS and IQOS included in the left side of its heading (common location of the indication related to website provider or the origin of the website), as well as various official images of the Complainant’s products, which contributes to a high risk of affiliation and confusion.

A core factor in assessing fair use of the disputed domain name is that it does not falsely suggest affiliation with the Complainant’s trademark. See section 2.5, WIPO Overview 3.0. The disputed domain name incorporates the Complainant’s trademarks in their entirety adding a geographical term “Dubai”, which also may point to the Complainant and its notorious trademark, as an indication of one of its official stores or distributors related to this country. Therefore, the Panel considers that there is a high risk of implied affiliation.

It is further remarkable the Respondent has not replied to the Complaint not providing any explanation connected to any of the circumstances included in paragraph 4(c) of the Policy or any other circumstance that may be considered as a right or legitimate interest in the disputed domain name. On the contrary, the Respondent has apparently taken down the website linked to the disputed domain name.

All the above-mentioned circumstances lead the Panel to conclude that the Respondent has not produced evidence to rebut the Complainant’s prima facie case, and all these case cumulative facts and circumstances point to consider that the Respondent lacks of any rights or legitimate interests in the disputed domain name. Therefore, the second element of the Policy under paragraph 4(a)(ii) has been established.

C. Registered and Used in Bad Faith

The Policy, paragraph 4(a)(iii), requires that the Complainant establish that the disputed domain name has been registered and is being used in bad faith.

The applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”, being the Panel prepared to draw certain inferences in light of the particular facts and circumstances of the case. See section 4.2, WIPO Overview 3.0.

The Panel considers that all cumulative circumstances of this case point to bad faith registration and use of the disputed domain name: (i) the disputed domain name incorporates the Complainant’s HEETS and IQOS marks in their entirety adding a geographical term (“Dubai”) that reinforces the likelihood of confusion or implied affiliation, creating the impression that the disputed domain name refers to the Complainant’s official store or distributor for Dubai, suggesting sponsorship or endorsement by the Complainant; (ii) the Complainant’s trademarks are notorious in its sector and the Complainant operates internationally; (iii) the Respondent used a privacy protection service to hide its identity in the whoIs record of the disputed domain name; (iv) the website that was linked to the disputed domain name included prominently the Complainant’s trademarks (in the left side of its heading), as well as various official product images of the Complainant’s HEETS and IQOS products; (v) the Respondent has not offered any explanation of any rights or legitimate interests in the disputed domain name and has not come forward to deny the Complainant’s assertions of bad faith, choosing not to reply to the Complaint; and (vi) the website that was linked to the disputed domain name has been apparently taken down.

It is further to be noted that non-use of the disputed domain name does not prevent a finding of bad faith under the doctrine of passive holding. See section 3.3, WIPO Overview 3.0.

Furthermore, the disclaimer contained in the website that was linked to the disputed domain name was not sufficiently clear and prominently displayed on that site, but at the bottom, after the long list of offered products and their official images (included with no authorization). This disclaimer did not clearly indicate the identity of the website provider and/or the owner of the disputed domain name, and their lack of relationship with the Complainant and its trademarks. Therefore, the Panel consider that this disclaimer cannot cure the Respondent’s bad faith. On the contrary, such disclaimer can be considered as an admission by the Respondent of knowing about the Complainant’s trademarks and the potential confusion of Internet users. See section 3.7, WIPO Overview 3.0.

Therefore, on the balance of probabilities, taking into consideration all cumulative circumstances of this case, the Panel considers that the disputed domain name was very likely registered targeting the Complainant’s trademarks HEETS and IQOS with the intention of obtaining a free ride on their established reputation, seeking to mislead Internet users to believe that there is a connection between the disputed domain name and the Complainant, which constitutes bad faith.

All of the above-mentioned circumstances lead the Panel to conclude that the disputed domain name was registered and is being used in bad faith. Accordingly, the Panel concludes that the Complainant has met its burden of establishing that the Respondent registered and is using the disputed domain name in bad faith under the third element 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 <heetsiqosdubai.com> be transferred to the Complainant.

Reyes Campello Estebaranz
Sole Panelist
Date: July 15, 2020

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