WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Mohamad Mazeh, Solimar Trading & Contracting Co.

Case No. D2020-2160

1. The Parties

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

The Respondent is Mohamad Mazeh, Solimar Trading & Contracting Co., Kuwait, self-represented.

2. The Domain Name and Registrar

The disputed domain name <iqoskw.com> 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 August 17, 2020. On August 17, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 18, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the 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 21, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 10, 2020. The Respondent requested an extension to file a Response. The Center granted a Response extension until September 22, 2020. The Response was filed with the Center on September 23, 2020.

The Center appointed Adam Taylor as the sole panelist in this matter on October 2, 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 the group of tobacco companies affiliated with Philip Morris International, Inc.

One of the group’s tobacco products is called “IQOS”, a heating device launched in 2014, which the Complainant describes as a “Reduced Risk Product” and into which specially designed “Heets” tobacco products are inserted to generate a “flavourful nicotine-containing aerosol”.

The Complainant owns many registered trade marks for IQOS, including Kuwait Trade Mark No. 163731 for the stylised term IQOS, filed on January 15, 2018, in class 34.

The disputed domain name was registered on June 7, 2020.

As of August 11, 2020, the disputed domain name was being used for a website in English and Arabic headed “IQOS Kuwait” with a Kuwaiti contact address and which offered for sale “Iqos” and “Heets” products that purported to be those of the Complainant. The website utilised the Complainant’s official photographs of its products.

The following disclaimer appeared in the footer of the website at the disputed domain name:

"THIS WEBSITE IS NOT AN OFFICIAL WEBSITE OF IQOS, HEETS, OR PHILIP MORRIS INTERNATIONAL (PMI). WE ARE NOT AFFILIATED WITH IQOS, HEETS, OR PHILIP MORRIS INTERNATIONAL (PMI). IQOS AND HEETS LOGOS ARE PROPERTIES OF PHILIP MORRIS INTERNATIONAL (PMI)."

5. Parties’ Contentions

A. Complainant

The following is a summary of the Complainant’s contentions.

The disputed domain name is confusingly similar to the Complainant’s trade mark, which it reproduces in its entirety. The addition of “kw”, the geographical abbreviation for Kuwait, is insufficient to avoid a finding of confusing similarity.

The Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent is not making legitimate noncommercial or fair use of the disputed domain name.

Nor is the Respondent making a bona fide offering of goods or services. It is not an authorised distributor or reseller of the Complainant’s products. Nor does it qualify as a legitimate reseller under UDRP principles as the disputed domain name itself, and the Respondent’s website, suggest an affiliation with the Complainant. The disclaimer on the website is not sufficiently clear or prominent. Furthermore, it serves to confirm the Respondent’s awareness of the Complainant’s trade mark.

The illegitimacy of the disputed domain name is further shown by the fact that the website gives the false impression that the Complainant has officially introduced its product into the Kuwaiti market.

The disputed domain name was registered and is being used in bad faith.

The Respondent was plainly aware of the Complainant’s trade mark when it registered the disputed domain name as the Respondent started offering the Complainant’s products for sale immediately after registering the disputed domain name and, furthermore, the term IQOS is made-up and unique to the Complainant.

The Respondent registered and used the disputed domain name with the intention of creating a likelihood of confusion under paragraph 4(b)(iv) of the Policy, including by reproducing the Complainant’s trade mark in the disputed domain name and in the website title, as well as by unauthorised use of the Complainant’s official product images.

B. Respondent

The Response states that the Second Respondent (Solimar Trading & Contracting Co) employs the First Respondent (Mohamad Mazeh) and is unconnected with the disputed domain name or the Complaint. The Response is filed only on behalf of the First Respondent. References to the Respondent below denote the First Respondent unless otherwise stated.

The following is a summary of the Respondent’s contentions.

The Respondent does not purport to be an official online retailer of the Complainant’s IQOS system and is not using the disputed domain name to create a likelihood of confusion with the Complainant’s mark.

While the Respondent did use the disputed domain name for an online store selling IQOS products in Kuwait, where the Complainant does not supply such goods, he did so in good faith.

There was no deception of visitors to the website because the Respondent’s lack of affiliation with the Complainant was clearly stated in the footer of the website, which is visible on every page of the website.

6. Discussion and Findings

Under the Policy, the Complainant is required to prove on the balance of probabilities that:

- the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights;

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

- the disputed domain name has been registered and is being used in bad faith.

A. Late Response

The Response was filed one day late.

Paragraph 10(d) of the Rules provides that the Panel shall consider the admissibility, relevance, materiality and weight of the evidence.

The Respondent has provided no explanation but, on the other hand, the Complainant has not objected to admissibility of the Response, which is brief and includes no new evidence.

In these circumstances, and given that the delay is a very short one, the Panel has decided to admit the late Response.

B. Identical or Confusingly Similar

The Complainant has established rights in the mark IQOS by virtue of its registered trade marks as well as unregistered trade mark rights deriving from the extensive use of that name.

Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) makes clear that, where the relevant trade mark is recognisable within the disputed domain name, the addition of other terms, whether descriptive, geographical or otherwise, would not prevent a finding of confusing similarity under the first element.

Here, the Complainant’s distinctive trade mark is readily recognisable within the disputed domain name and, accordingly, the addition of the geographical abbreviation “kw”, shorthand for Kuwait, does not avert a finding of confusing similarity.

For the above reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trade mark.

The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.

C. Rights or Legitimate Interests

As explained in section 2.1 of WIPO Overview 3.0 , the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.

Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.

As to paragraph 4(c)(i) of the Policy, the Respondent purports to resell the Complainant’s own goods. The consensus view of UDRP panels – as expressed in section 2.8 of WIPO Overview 3.0 – is that to establish a bona fide offering of goods or services in such circumstances, the respondent must comply with certain requirements (known as the “Oki Data test”) including that the site accurately and prominently discloses the Respondent’s relationship with the trade mark holder.

In the Panel’s view, the Respondent’s website fails to comply with this requirement. Contrary to the Respondent’s assertion otherwise, it does present as an official website of the Complainant. The disclaimer, which appears only in the footer of the website, is far from prominent and likely to have been missed by many visitors to the website. Furthermore, the Respondent does not deny using the title “IQOS Kuwait” or incorporating the Complainant’s official photographs of its products without its permission. These aspects further contribute to the impression that the website is the Complainant’s official website for Kuwait – as does the use of the disputed domain name comprising the Complainant’s trade mark plus the term “kw” denoting Kuwait.

The Panel considers that, in these circumstances, the disclaimer on the Respondent’s website does not constitute an accurate and prominent disclosure of the (lack of) relationship between the Respondent and the Complainant.

Accordingly, the Panel considers that the Respondent’s use of the disputed domain name cannot be said to be bona fide.

Nor is there any evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.

The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.

D. Registered and Used in Bad Faith

It is obvious, and the Respondent does not deny, that it registered the disputed domain name with the Complainant’s distinctive and well-known trade mark in mind as it has been used for a website purporting to offer the Complainant’s own products for sale.

In the Panel’s view, the Respondent set out to create a likelihood of confusion with the Complainant’s mark for the purposes of paragraph 4(b)(iv) of the Policy including by selecting a domain name dominated by the Complainant’s distinctive mark, branding the website with a name corresponding to the mark and using the Complainant’s official product photographs (without permission).

The Respondent draws attention to the fact that the Complainant does not sell its products in Kuwait but, even if so, that does not assist the Respondent, not least because the Respondent’s own website in fact implies otherwise.

The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) 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 <iqoskw.com> be transferred to the Complainant.

Adam Taylor
Sole Panelist
Date: October 16, 2020