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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. H IQOS Iqosuae24.Com /Ahmed Gulja

Case No. D2020-2430

1. The Parties

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

The Respondent is H IQOS Iqosuae24.Com, the United Arab Emirates /Ahmed Gulja, Bangladesh.

2. The Domain Name and Registrar

The disputed domain name <iqosuae24.com> is registered with Porkbun LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 18, 2020. On September 18, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 18, 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 September 21, 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 September 22, 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 September 29, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 19, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 21, 2020.

The Center appointed Beatrice Onica Jarka as the sole panelist in this matter on October 23, 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 Philip Morris Products S.A. part of a group of companies affiliated with Philip Morris International Inc. (PMI), an international tobacco company. PMI sells a product branded IQOS, which is a controlled heating device into which specially designed tobacco products under the brand names “HEETS” or “HEATSTICKS” are inserted and heated to generate a nicotine-containing aerosol. The IQOS system also consists of an IQOS Pocket Charger, specially designed to charge the IQOS Holder (collectively referred to as the IQOS System). The IQOS System was first launched by PMI in Nagoya, Japan in 2014 and has obtained a 18.3% share of the market in Japan. Nowadays, the IQOS System is available in key cities in around 57 markets across the world. As a result of a USD 6 billion investment and extensive international sales (in accordance with local laws), the IQOS System has achieved international success and reputation.

For its new smoke-free products, the Complainant owns a large portfolio of well-known trademarks. Among them, but by no means limited to, are the following Trademark registrations:

- United Arab Emirates Registration IQOS (word) No. 211139 registered on March 16, 2016;
- United Arab Emirates Registration IQOS (word/device) No. 211143 registered on March 16, 2016;
- United Arab Emirates and Registration HEETS (word) No. 256864 registered on December 25, 2017; and
- United Arab Emirates Registration HEETS (word/device) No. 256867 registered on December 25, 2017.

The Respondent, according to the WhoIs information at the time of this decision, appears to be using a privacy service, and the identity of the real owner and operator of the domain is concealed. However, the Panel notes that the Registrar has confirmed that Ahmed Gulja is the registrant of the disputed domain name, the Complainant has addressed its amended Complaint against Ahmed Gulja, and the Panel finds that Ahmed Gulja is the Respondent in this proceeding.

The disputed domain name is linked to an online shop selling and offering what purports to be the Complainant’s IQOS and HEETS products (the “Website”). The fact that the Website is indicating all prices in the United Arab Emirates dirham currency, as well as presenting the designations “All United Arab Emirates 24/7” and “Dubai No. 1 Online Shopping Site”, indicates that the Website is directed to the United Arab Emirates.

According to the WhoIs information the disputed domain name was registered on July 1, 2020.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

- The Complainant is the registered owner of the IQOS trademark in numerous jurisdictions, including, but not limited to the United Arab Emirates.

- The disputed domain name <iqosuae24.com> is confusingly similar to the IQOS trademark registrations of the Complainant.

- The disputed domain name identically adopts the Complainant’s IQOS trademarks. It is well established that the applicable Top-Level Domain (“TLD”) in a domain name is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11 and the cases referenced therein). It is further established that the addition of merely generic, descriptive, or geographical wording to a trademark the disputed domain dame reproduces the IQOS trademark in its entirety, in addition to the geographical abbreviation for the United Arab Emirates, i.e. “uae”, and non-distinctive number “24”.

- This unlawful association is exacerbated by the use of the Complainant’s official product images without the Complainant’s authorization. Therefore, the first element of the UDRP is met.

- The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register a domain name incorporating its IQOS trademark (or a domain name which will be associated with this trademark).

- The Respondent’s use of the disputed domain name does not fulfil the Oki Data scenario as it cannot be considered “fair” if it suggests an affiliation with the trademark owner, as it does the disputed domain name which suggests by itself at least an affiliation with the Complainant and its IQOS trademark, as the disputed domain name wholly reproduces the Complainant’s registered IQOS trademark together with the geographical abbreviation for the United Arab Emirates, i.e. “uae”, and non-distinctive number “24”.

- In addition, the owner / administrator of the website under which the disputed domain name resolves, prominently and without authorization presents the Complainant’s registered IQOS trademark appearing at the up left of the Website, where relevant consumers will usually expect to find the name of the online shop and/or the name of the website provider.

- The website under which the disputed domain name resolves further uses the Complainant’s official product’s images without authorization, while at the same time falsely claiming copyright in this material, which is a an illegitimate and false claim of rights in the Complainant’s official copyright protected material further supports the false impression, that the website is endorsed by the Complainant, which it is not.

- The website includes no information regarding the identity of the provider of the website, which is only identified as “H IQOS Iqosuae24.Com”, under which the dispute domain resolves, being a name which similarly includes the Complainant’s registered IQOS trademark (without authorization) and further serves to perpetuate the false impression of an official commercial relationship between the website and the Complainant.

- It is evident from the Respondent’s use of the disputed domain name that the Respondent knew of the Complainant’s IQOS trademark when registering the disputed domain name. The Respondent started offering the Complainant’s IQOS System immediately after registering the disputed domain name.

- It is also evident from the Respondent’s use of the disputed domain name that the Respondent registered and used the disputed domain name with the intention to attract, for commercial gain, internet users to the website by creating a likelihood of confusion with the Complainant’s registered IQOS trademark 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 pursuant to paragraph 4(b)(iv) of the Policy.

- The use by the Respondent of a privacy protection service to hide its true identity may in itself constitute a factor indicating bad faith according to WIPO Overview 3.0, section 3.6.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that the Complainant has rights in the IQOS trademark acquired through use and registration.

The disputed domain name is confusingly similar to the IQOS trademark registrations of the Complainant, as it identically reproduces the IQOS trademark in its entirety, in addition to the geographical abbreviation for the United Arab Emirates, i.e. “uae”, and the number “24” (see WIPO Overview 3.0, section 1.7).

Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element (see WIPO Overview 3.0, section 1.8).

The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant’s IQOS trademark and the first element under of paragraph 4(a) of the Policy is therefore established.

B. Rights or Legitimate Interests

To establish the second element of the Policy, the Complainant has to show that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that showing, the burden of production shifts to the Respondent, according to WIPO Overview 3.0, section 2.1.

In these proceedings, this Panel finds that the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and such showing has not been rebutted by the Respondent, as it did not reply to the Complainant’s contentions.

Accordingly, the Panel finds that the Respondent is not making a legitimate noncommercial or fair use of the dispute domain name. On the contrary, 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 trademarks owned by the Complainant.

Moreover, the Respondent is not an authorized distributor or reseller of the IQOS System and the website provided under the disputed domain name does not meet the requirements set out by numerous panel decisions for a bona fide offering of goods, first under Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. As it is documented, the website resolving to the disputed domain name prominently and without authorization presents the Complainant’s registered IQOS trademark appearing at the up left of the website, where relevant consumers will usually expect to find the name of the online shop and/or the name of the website provider. In addition, the website under which the disputed domain name resolves uses the Complainant’s official product images without authorization, while at the same time falsely claiming copyright in this material, which is a an illegitimate and false claim of rights in the Complainant’s official copyright protected material further supports the false impression, that the website is endorsed by the Complainant, which it is not. This Panel notes that the website includes no information regarding the identity of the provider of the website, which is only identified as “H IQOS Iqosuae24.Com” on the website, under which the dispute domain resolves, being a name which similarly includes the Complainant’s registered IQOS trademark (without authorization) and further serves to perpetuate the false impression of an official commercial relationship between the website and the Complainant.

In addition, noting the composition of the disputed domain name, the Panel finds that any Internet user when visiting the website provided under the disputed domain name will reasonably expect to find a website commercially linked to the owner of the IQOS trademarks (see WIPO Overview 3.0, section 2.5.1).

Therefore, in the opinion of this Panel, the Complainant has fully demonstrated that the Respondent lacks any rights or legitimate interests in the disputed domain name and consequently, the second element of paragraph 4(a) of the Policy is therefore established.

C. Registered and Used in Bad Faith

This Panel agrees with the Complainant that the Respondent’s use of the disputed domain name as analyzed at point B above is a clear indication that the Respondent registered and used the disputed domain name with the intention to attract, for commercial gain, internet users to the website by creating a likelihood of confusion with the Complainant’s registered IQOS trademark 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 pursuant to paragraph 4(b)(iv) of the Policy.

Furthermore, considering the contentions of the Complainant, which have not been rebutted by the Respondent, and the fact that Respondent uses a privacy protection service to hide its true identity, this Panel holds that the disputed domain name was registered and used in bad faith.

The Panel finds that the third element of paragraph 4(a) of the Policy is therefore established.

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 <iqosuae24.com> be transferred to the Complainant.

Dr. Beatrice Onica Jarka
Sole Panelist
Date: November 6, 2020

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