WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Aramayis Martirosyan

Case No. D2020-1913

1. The Parties

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

The Respondent is Aramayis Martirosyan, United Arab Emirates.

2. The Domain Name and Registrar

The disputed domain name <iqosheetsbuy.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 July 22, 2020. On July 22, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 3, 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 August 5, 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 August 7, 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 August 11, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 31, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 2, 2020.

The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on September 8, 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 globally-known trademark MARLBORO. The Complainant and its group have developed various 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 (including in the United Arab Emirates). 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 flavored nicotine-containing aerosol.

The Complainant holds a large portfolio of registered trademark rights in the marks IQOS and HEETS in many jurisdictions, denominative or with a specific graphic representation, including United Arab Emirates Registration No. 211139 IQOS, word mark, registered on March 16, 2016, in class 34; United Arab Emirates Registration No. 211143 IQOS, figurative, registered on March 16, 2016, in class 34; United Arab Emirates Registration No. 256864 HEETS, word mark, registered on December 25, 2017, in class 34; United Arab Emirates Registration No. 256867 HEETS, figurative, registered on December 25, 2017, in class 34; and International Registration No. 1326410 HEETS, word mark, registered on July 19, 2016, in classes 9, 11 and 34 (collectively the “IQOS mark” and the “HEETS mark”).

The Complainant further holds a large portfolio of registered trademark rights in the mark consisting of a hummingbird logo, including United Arab Emirates Registration No. 261231, registered on January 18, 2018, in class 34 (the “HUMMINGBIRD LOGO mark”).

The disputed domain name was registered on June 3, 2020, and it is linked to a website, in the English language, allegedly offering for sale the Complainant’s IQOS System and HEETS products. This website includes in its heading, before the text content of the site, the Complainant’s registered IQOS and HEETS marks and the words “IQOS & HEETS UAE” written in block capitals underneath the phrase “FREE SHIPPING FOR ORDER’S 300 AED & ABOVE” also in block capitals of a smaller size. The landing page of this website includes in the explanation of one of the products the phrase “We designed the IQOS 3 MULTI to provide a different experience to our other devices”. The prices included in this website are indicated in Unites Arb Emirates Dirham (DHS) currency. This website includes a number of the Complainant’s official product images, providing a copyright notice at the bottom of the site on behalf of “IQOS & HEETS UAE”. This website’s content does not show any details regarding the provider and/or the owner of the disputed domain name. The “Privacy Policy”, “Terms of Service”, and “Refund Policy” sections included on the bottom of the website refer to the name “Heet not Burn” as the provider of the website, not including any information about its corporate form, fiscal number, address or any contact details. The only contact details included in this website are a WhatsApp connection and various links to social media pages, which use the names “Heetstyle”, “heetstyle_uae”, “Heets Dubai” and the HUMMINGBIRD LOGO mark. The website further includes, in block capitals at the right side bottom, the phrase “ABOUT US: OUR WEBSITE IS NOT CONNECTED WITH PHILIP MORRIS INTERNATIONAL [PMI]. WE ARE NOT THE OFFICIAL WEBSITE OF PMI AND IQOS”.

5. Parties’ Contentions

A. Complainant

Key contentions of the Complaint may be summarized as follows:

The Respondent is allegedly the same as or connected to the respondent in a prior UDRP case, namely Philip Morris Products S.A. v. Private Registration / Keith Owen Ponce, WIPO Case No. D2019-1104, in relation to the domain name <heetnotburn.com>. The website linked to the disputed domain name is similar to the one that was linked to the domain name <heetnotburn.com>, and both websites include an identical disclaimer. This clearly indicates that the Respondent has previously acted in bad faith, and continues to act in bad faith.

Through its intensive use and promotion, with a USD 6 billion investment, the IQOS System have 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 IQOS and HEETS marks in their entirety, with the addition of the non-distinctive and descriptive term “buy”, 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 IQOS and the HEETS marks. This unlawful association is exacerbated by the use of the Complainant’s official product images without authorization and by a reference in the content of the site that identifies the provider as the owner of some IQOS System products (“We designed the IQOS 3 MULTI to provide a different experience to our other devices”).

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 IQOS and HEETS marks, and the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The Respondent 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. 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. The Respondent’s website includes no information regarding the identity of its provider, and displays various Complainant’s official product images (falsely claiming copyright in this material), as well as the IQOS mark and the HEETS mark in a prominent position (with no authorization), which reinforces the false impression of an official commercial relationship between this website and the Complainant. The disclaimer offered at the bottom of the website is not presented in a clear and sufficiently prominent manner, being likely that users or relevant consumers will order products in the online store without seeing it. The disclaimer serves to confirm that the Respondent was aware of the Complainant’s trademarks at the point of registration of the disputed domain name, showing an “initial interest of confusion”. The likelihood of association is amplified 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. The terms “iqos” and “heets” are purely imaginative and unique, not being commonly used in the tobacco electronic devices sector, and 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. The use of the disputed domain name reveals the Respondent’s intention to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant and its registered trademarks. 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 his identity is a factor indicating bad faith, and the Respondent’s purported recent involvement in the bad faith registration and use of a prior domain name (<heetnotburn.com>)shows a pattern of bad faith conduct in connection with domain names incorporating the Complainant’s trademarks.

The Complainant has cited previous decisions under the Policy as well as various sections 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

The Complainant indisputably has rights in the registered IQOS and HEETS marks. The disputed domain name incorporates these marks in their entirety followed by the term “buy”, which does not avoid confusing similarity with these trademarks. The Complainant’s IQOS and HEETS marks are clearly recognizable in the disputed domain name, and the generic Top-Level Domain (“gTLD”) “.net” is a technical requirement, generally disregarded for the purpose of the analysis of the confusing similarity. See sections 1.7, 1.8, and 1.11.1, WIPO Overview 3.0.

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 right or 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., supra). See section 2.8, WIPO Overview 3.0.

The evidence in the file shows the disputed domain name is linked to a website, which commercializes alleged HEETS and other IQOS System products not prominently disclosing the lack of relationship with the Complainant and its trademarks. The Panel notes that the disclaimer included at the bottom, on the right side bottom of the website, may go unnoticed and mentions only IQOS mark (and not HEETS mark). The content of this website further leads to create an affiliation with the Complainant and its trademarks: i) including a reference in its landing page indicating that the provider of the website is the designer of some IQOS System products (“We designed the IQOS 3 MULTI to provide a different experience to our other devices”); ii) including the Complainant’s HEETS and IQOS marks in the heading of the website, common location of the indication related to the website provider or the origin of the website (in the phrase “IQOS & HEETS UAE” written in block capitals); iii) including various official images of the Complainant’s products, claiming copyright in this material; and iv) including links to various social media platforms’ pages that further reproduce the Complainant’s IQOS, HEETS marks and its HUMMINGBIRD LOGO mark or include names incorporating the Complainant’s trademarks like “Heetstyle”. The Panel considers that all these circumstances contribute to a risk of affiliation and confusion.

Furthermore, 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 term “buy”, which also may point to the Complainant and its notorious trademarks, as an indication of one of its official stores or distributors. Therefore, the Panel considers that there is a 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.

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 term (“buy”) that reinforces the likelihood of confusion or implied affiliation, creating the impression that the disputed domain name refers to one of the Complainant’s official stores or distributors, suggesting sponsorship or endorsement by the Complainant; (ii) the Complainant’s trademarks are notorious in its sector and the Complainant operates internationally including the United Arab Emirates, where the Respondent is located according to the Registrar verification; (iii) the website linked to the disputed domain name includes prominently the Complainant’s trademarks (in its heading), as well as various official product images of the Complainant’s HEETS and IQOS products, a phrase indicating that the website provider designed some IQOS System products and links to various social media platforms’ pages that reproduce the Complainant’s trademarks or include names incorporating the Complainant’s trademarks; and (iv) 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.

It is further to be noted that the disclaimer contained in the website linked to the disputed domain name is not prominently displayed on the site, but at the bottom, after a long list of offered products and official images of the Complainant’s products (included with no authorization). This disclaimer does not clearly indicate the identity of the website provider and/or the owner of the disputed domain name and mentions only one of the Complainant’s marks. Therefore, the Panel considers that this disclaimer cannot cure the Respondent’s bad faith under the overall circumstances of this case. On the contrary, such disclaimer may 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.

Furthermore, the Complaint has alleged that the website linked to the disputed domain name is very similar to the one linked to another domain name that was transferred to the Complainant in a prior case under the Policy (namely Philip Morris Products S.A. v. Private Registration / Keith Owen Ponce, supra, in relation to the domain name <heetnotburn.com>), containing an identical disclaimer. The Panel further notes that the “Privacy Policy”, “Terms of Service”, and “Refund Policy” sections included in the website linked to the disputed domain name refer to the name “Heet not Burn” as the provider of the website. These circumstances point to a same control of both the disputed domain name and the domain name <heetnotburn.com>, corroborating a bad faith registration and use of the disputed domain name and a possible pattern of conduct in targeting the Complainant’s trademarks preventing the Complainant from reflecting these marks in a domain name. See section 3.1.2, 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 HEETS and IQOS marks 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 <iqosheetsbuy.net> be transferred to the Complainant.

Reyes Campello Estebaranz
Sole Panelist
Date: September 17, 2020