WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Babar Husain M

Case No. D2020-1091

1. The Parties

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

Respondent is Babar Husain M, India.

2. The Domain Name and Registrar

The disputed domain name <iqos-heets-uae.net> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 4, 2020. On May 4, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 5, 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 Complainant on May 7, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May 7, 2020.

The Center verified that 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 May 13, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 2, 2020. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 18, 2020.

The Center appointed Fernando Triana, Esq as the sole panelist in this matter on July 7, 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

Complainant is a leading international tobacco company, with presence in at least 180 countries. Owner of the trademark MARLBORO, the world’s most recognized trademark cigarette trademark since 1972.

Complainant developed a line of products, under which it developed the trademark IQOS and HEET. The product branded as IQOS is a controlled heating device in which the goods identified under the trademark HEETS are inserted. The goods identified with the trademark HEETS are tobacco products that generate a flavor nicotine-containing aerosol.

Both trademarks also identify goods related to the products described above.

Among others, Complainant owns the following trademarks:

- United Arab Emirates registration (word) No. 211139 for the trademark IQOS, registered on registered on March 16, 2016, regarding goods of international class 34.

- United Arab Emirates registration No. 256867 for the trademark HEETS, registered on registered on December 25, 2017, regarding goods of international class 34.

The disputed domain name was registered on November 29, 2019, and it is linked to an online shop purporting to sell the Complainant’s products along with accessories of third parties.

5. Parties’ Contentions

A. Complainant

- Complainant owns the trademark IQOS and HEETS in several jurisdiction, including but not limited to the United Arab Emirates.
- The disputed domain name is confusingly similar to the trademarks IQOS and HEETS.
- Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register a domain name incorporating its IQOS and HEETS trademarks.
- Respondent is not making a legitimate noncommercial or fair use of the disputed domain name as Respondent’s behavior shows a clear intent to obtain an unfair commercial gain.
- Respondent is not commonly known for the disputed domain name.
- Respondent is not an authorized distributor or reseller of the IQOS System.
- Respondent is not making a bona fide offering of goods.
- Respondent is not only offering Complainant’s products but also competing tobacco accessories of other commercial origin.
- The inclusion of a disclaimer, which is inaccurate, does not diminish the confusion or legitimates the use of the trademarks within the disputed domain name.
- Respondent knew Complainant’s trademarks before including them in the disputed domain name.
- Both IQOS and HEETS are words created by Complainant and are not commonly used to identify tobacco products or electronic devices. Hence, it is clear that Respondent was seeking a misleading association with Complainant.
- Respondent registered the disputed domain name with the intention to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with Complainant’s trademarks IQOS and HEETS as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location, which constitutes registration and use in bad faith.
- Respondent has shown a pattern of bad faith conduct in connection with domain names incorporating the Complainant’s trademarks.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

Likewise, paragraph 10(d) of the Rules, provides that “the Panel shall determine the admissibility, relevance, materiality and weight of the evidence”.

The Panel wishes to place special emphasis on the evidence filed to prove assertions, which has been thoroughly studied in order to determine its relevance and weight in arriving at a decision. The statements that have been accompanied by evidence have been given more importance than the mere unsubstantiated assertions.

Paragraph 4(a) of the Policy requires that Complainant prove each of the following three elements to obtain an order that the disputed domain name be cancelled or transferred:

(1) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(3) the disputed domain name has been registered and is being used in bad faith.

This discussion, based on the evidentiary support submitted by the Complainant, noting that the Respondent did not reply to the Complainant’s contentions, will be discussed as follows:

First of all, the Panel will determine whether or not the disputed domain name is identical or confusingly similar to the trademark in which Complainant has rights. Secondly, the Panel will verify if Respondent has any rights or legitimate interests in respect of the disputed domain name; and thirdly, the Panel will establish whether or not the disputed domain name has been registered and is being used in bad faith by Respondent.

A. Identical or Confusingly Similar

Complainant contends to be the owner of the trademarks IQOS and HEETS in several jurisdictions, including but not limited to the United Arab Emirates to identify goods of international class 34.

a) Existence of a trademark or service mark in which the Complainant has rights

Firstly, it is important to point out that Paragraph 4(a) of the Policy requires the existence of a trademark or a service mark.

When a sign is registered as a trademark, it is surrounded by a presumption of sufficient distinctiveness, and the owner is granted with an exclusive right over the mark, which entitles him to prevent any third party from using the registered sign or any other sign confusingly similar to it.

In this case, Complainant proved its rights in the trademarks IQOS and HEETS. Annex 6 to the Complaint include:

- United Arab Emirates registration for the trademark IQOS, registered on registered on March 16, 2016, regarding goods of international class 34.

- United Arab Emirates registration for the trademark HEETS, registered on registered on December 25, 2017, regarding goods of international class 34.

This information appears to be incontestable and conclusive evidence of Complainant’s ownership of the cited trademarks and the exclusive right to use them in connection with the stated goods. The registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.

Thus, Complainant established its rights in the trademarks IQOS and HEETS.

Therefore, the Panel concludes that Complainant has demonstrated rights in the trademarks IQOS and HEETS for purposes of Paragraph 4(a)(i) of the Policy.

b) Identity or confusing similarity between the Disputed Domain Name and the Complainant’s trademark

Complainant alleges that the disputed domain name incorporates the trademarks IQOS and HEETS, adding only the geographical term “uae” and the generic Top-Level Domain “.net”.

On the first place, before establishing whether or not the disputed domain name <iqos-heets-uae.net> is confusingly similar to Complainant’s trademarks IQOS and HEETS, the Panel wants to point out that the addition of a gTLD, i.e., “.com,” “.biz,” “.edu,” “.org,” or “.net”, as in the case, is generally disregarded when determining if the disputed domain name is identical or confusingly similar to the trademark, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 1.11.

Hence, the inclusion of the “.net” gTLD, in the disputed domain name is not a factor in analyzing whether a disputed domain name is identical or confusingly similar to the mark in which Complainant asserts rights.

Furthermore, the Panel considers that the reproduction of the trademarks IQOS and HEETS, by the disputed domain name <iqos-heets-uae.net>, respectively, is sufficient ground to establish that the disputed domain name is confusingly similar to the trademarks. Especially since the disputed domain name reproduces entirely Complainant’s trademark which are clearly recognizable in the disputed domain name.

In addition, the Panel agrees with the Complainant on the conclusion that including the term “uae” at the end of the disputed domain name is not sufficient to prevent a finding of confusing similarity between the disputed domain name and the trademarks IQOS and HEETS (section 1.8 of the WIPO Overview 3.0).

In consequence, as per this reasoning, the Panel finds that, the disputed domain name is confusingly similar to Complainant’s trademarks and thus, the requirement set forth in Paragraph 4(a)(i) of the Policy is duly complied with.

B. Rights or Legitimate Interests

a) Prima facie case

Regarding this second element of Paragraph 4(a) of the Policy, UDRP panels have unanimously found that requiring the Complainant to prove the lack of rights or legitimate interests of the Respondent in the disputed domain name is often an impossible task: it is not only a negative but also demands access to information that is mostly within the knowledge of the Respondent¹ .

In Julian Barnes v. Old Barn Studios Ltd., WIPO Case No. D2001-0121, the Panel stated that:

“Is the Respondent required to adduce any such evidence, if the onus is on the Complainant to prove the three elements of paragraph 4 of the Policy? While the overall burden of proof is on the Complainant, this element involves the Complainant proving matters, which are peculiarly within the knowledge of the Respondent. It involves the Complainant in the often impossible task of proving a negative. In the Panel’s view the correct approach is as follows: the Complainant makes the allegation and puts forward what he can in support (e.g. he has rights to the name, the Respondent has no rights to the name of which he is aware, he has not given any permission to the Respondent). Unless the allegation is manifestly misconceived, the Respondent has a case to answer and that is where paragraph 4(c) of the Policy comes in. If the Respondent then fails to demonstrate his rights or legitimate interests in respect of the Domain Name, the complaint succeeds under this head”.

Therefore, a Complainant is required to make a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Once this prima facie case is made, the burden of production shifts to Respondent, who must come forward with concrete evidence of its rights or legitimate interests ². If Respondent fails to do so, Complainant is deemed to have met the second element of Paragraph 4(a) of the Policy.

Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name <iqos-heets-uae.net> because of the following: i) Respondent has not been authorized by Complainant to use the trademarks IQOS and HEETS in any manner; ii) Respondent registered and uses the disputed domain name to infringe Complainant’s rights in the trademarks IQOS and HEETS and to trade off Complainant’s good will; iii) Respondent is Complainant’s competitor since it offers the same class of goods manufactured and sold by Complainant; iv) Respondent has not used the disputed domain name in connection with a bona fide offering of goods and services, because the disputed domain names offer competing goods; and v) Respondent is not commonly known by the disputed domain name.

The Panel accepts these assertions as a prima facie case made by Complainant that shifts the burden of production to Respondent.

b) Respondent’s rights or legitimate interests in the disputed Domain Name.

Paragraph 4(c) of the Policy includes a non-limited listing of circumstances that serve to prove Respondent’s rights or legitimate interests in a disputed domain name:

(i) before any notice 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 you have 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.

Respondent did not file any Response, thus, failed to rebut Complainant’s prima facie case, and to show his rights or legitimate interests in the disputed domain name <iqos-heets-uae.net>. Hence, as per paragraph 14 of the Rules, the Panel shall draw such inferences therefrom as it considers appropriate:

- Respondent’s use of the disputed domain name is not in connection with a bona fide offering of goods or services, as it uses a third party’s trademarks to offer competing goods. Consequently, Respondent’s use is directed to capitalize Complainant’s trademarks IQOS and HEETS goodwill by attracting Internet users to its disputed domain name

- There is no evidence within the file proving that Respondent is commonly known by the disputed domain name.

- There is no evidence within the file proving that Complainant licensed or otherwise permitted any use by Respondent of its trademarks.

- There is no evidence within the file justifying the choice of the trademarks IQOS and HEETS to create the disputed domain name for a bona fide purpose.

- There is no evidence within the file proving Respondent’s rights over the trademarks IQOS and / or HEETS anywhere in the world.

- The disputed domain name is confusingly similar to the trademarks IQOS and HEETS. In fact, “uae” correspond to the United Arab Emirates. Considering Complainant’s presence in the United Arab Emirates, as shown by the trademark registrations, the disputed domain name is likely to be understood by consumers as a United Arab Emirates division of Complainant’s business. Respondent merely adds the geographical term “uae” to the distinctive trademarks IQOS and HEETS. The nature of the disputed domain name creates a risk of implied affiliation or association with the Complainant (section 2.5.1 of the WIPO Overview 3.0).

While the website at the disputed domain name includes a disclaimer with the text “IQOS HEETS DUBAI HAVE NO AFFILIATION WITH PHILIP MORRIS INTERNATIONAL (PMI). THIS IS NOT OFFICIAL WEBSITE OF PMI AND IQOS.” the Panel find that this is not a clear and prominent disclaimer. In any case, noting the nature of the disputed domain name, the Panel finds that a disclaimer on the website is not capable to avoid a risk of an implied association or affiliation between the disputed domain name and the Complainant.

- There is evidence within the file proving that Respondent is making a commercial use of the disputed domain name, with the intention of commercial gain by misleadingly divert consumers.

The Panel thus concludes that Respondent lacks rights and legitimate interests in the disputed domain name.

Therefore, the second requirement of paragraph 4(b) of the Policy is met.

C. Registered and Used in Bad Faith

According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a 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 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 Respondent’s 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 competitor; or

(iv) By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his/her website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his/her website or location or of a product or service on his/her website or location.

For the Panel is evident that Respondent knew of the existence and importance of Complainant’s trademarks when registering the disputed domain name. It is not a coincidence to include two trademarks owned by the same Complainant.

Moreover, on Annex 8 to the Complaint, Complainant proved the content of the disputed domain name. This Annex shows Respondent’s use of the disputed domain name to market and sell competing goods.

These two facts are enough to conclude that Respondent registered the disputed domain name to disrupt Complainant’s business and to attract, for commercial gain, Internet users to it website, by creating a likelihood of confusion with Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement.

Finally, the inclusion of a disclaimer within Respondent’s resolving website does not demonstrate good faith, on the contrary, it shows that the Respondent is aware that an Internet user may be confused by the composition of the disputed domain name.

Therefore, the three elements of the Policy 4(a)(iii) are satisfied in the present case in respect to Respondent of the disputed domain names.

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 <iqos-heets-uae.net> be transferred to the Complainant.

Fernando Triana, Esq.
Sole Panelist
Date: July 24, 2020

¹ See Arla Foods amba v. Bel Arbor / Domain Admin, PrivacyProtect.org, WIPO Case No. D2012-0875; see also F. Hoffmann-La Roche AG v. Bargin Register, Inc. - Client Servs., WIPO Case No. D2012-0474.