WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. WhoisGuard Protected, WhoisGuard, Inc. / Vadim Yudin

Case No. D2021-0596

1. The Parties

The Complainant is Philip Morris Products S.A., Switzerland, represented by Boehmert & Boehmert, Germany.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Vadim Yudin, United Arab Emirates.

2. The Domain Names and Registrar

The disputed domain names <iqhee.com> and <iqsaudi.com> are registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 25, 2021. On February 26, 2020 the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 26, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 1, 2021 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 amendment to the Complaint on March 1, 2021.

The Center verified that the Complaint together with the amendment to 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 March 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 23, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 24, 2021.

The Center appointed Assen Alexiev as the sole panelist in this matter on April 1, 2021. 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 affiliated to Philip Morris International Inc., which is a leading international tobacco company with products sold in about 180 countries. The Complainant’s group of companies has developed the IQOS system – a heating device into which specially designed tobacco products under the brand names HEETS and HEATSTICKS are inserted and heated to generate a nicotine-containing aerosol. The IQOS system was first launched in Japan in 2014 and has 20 per cent share of the market in that country. The IQOS system is now available in key cities in about 64 countries almost exclusively through official IQOS stores and websites and selected authorized distributors and retailers and has about 17.6 million users.

The Complainant is the owner of the following trademark registrations for the sign IQ (the “IQ trademark”):

− the European Union trademark IQ with registration No. 018226787, registered on August 5, 2020 for goods in International Classes 9 and 34; and

- the United Arab Emirates trademark IQ with registration No. 322648, registered on April 27, 2020 for goods in International Class 34.

The Complainant is also the owner of the International trademark HEETS with registration No. 1326410, registered on July 19, 2016 for goods in International Classes 9, 11, and 34 (the “HEETS trademark”).

The disputed domain name <iqhee.com> was registered on November 18, 2020. It redirects to an online shop that offers the Complainant’s IQOS and HEETS products for sale in the United Arab Emirates.

The disputed domain name <iqsaudi.com> was registered on November 23, 2020. At the time of filing of the Complainant it resolved to an online shop offering IQOS products and upon Notification it displayed a “coming soon” notice. At the time of this decision, it resolves to a blank page with the online platform Shopify (including such logo).

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain names resolve to English-language online shops that are connected to each other through a referral link and that offer what appears to be the Complainant’s IQOS system, although the Complainant cannot confirm whether the offered products are genuine. The online shops at the disputed domain names prominently use the Complainant’s IQ trademark accompanied by the geographic term “saudi” or the element “hee” (which suggests the Complainant’s HEETS trademark) at the top left of the websites, where consumers usually expect to find the name of the online shop or the name of the provider of the website, followed by texts mentioning the Complainant’s IQOS and HEETS trademarks and a collage of the Complainant’s official copyright-protected product images and marketing materials without authorization. At the bottom of the websites there are notices claiming copyright in the websites’ content and disclaimers stating that the websites “have no affiliation with Philip Morris International (PMI)” and that they are “not official websites of PMI and IQOS,” which leaves it unclear whether the websites might still be authorized by the Complainant. The Complainant adds that the websites contain no details regarding the identity of their provider.

The Complainant states that the disputed domain names are confusingly similar to its IQ trademark, because the disputed domain names reproduce this trademark accompanied by the descriptive geographic term “saudi” or with the element “hee” which may be perceived as a reference to the Complainant’s HEETS trademark.

According to the Complainant, the Respondent has no rights or legitimate interests in respect of the disputed domain names, because the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register the disputed domain names incorporating the IQ trademark, and the Respondent is not an authorized distributor or reseller of the IQOS System. The Complainant adds that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names. Rather, it attempts to obtain an unfair commercial gain by misleadingly diverting consumers to the websites at the disputed domain names, and its conduct does not meet the requirements for a bona fide offering of goods. The disputed domain names suggest an affiliation with the Complainant and the IQ and HEETS trademarks, and the associated websites feature the IQ trademark in their names and use the Complainant’s official product images and marketing materials without authorization, while at the same time claiming copyright in these materials, and including no information regarding the identity of the provider of the websites, although they contain an unclear disclaimer at the bottom of the websites, so that consumers might order products in the online shop under the false impression that they are endorsed by the Complainant without encountering the disclaimer.

The Complainant contends that the disputed domain names were registered and are being used in bad faith. According to the Complainant, the Respondent knew of the Complainant’s IQ trademark and targeted it when registering the disputed domain names and started offering the Complainant’s IQOS and HEETS branded products, which is evident from the way in which the Respondent uses the IQ trademark in the disputed domain names and in the names of its online shops and from the use of the Complainant’s copyright protected official product images and marketing materials. The Complainant submits that the Respondent registered and used the disputed domain names with the intention to attract, for commercial gain, Internet users to its websites by creating a confusion with the Complainant’s IQ trademark as to the source, sponsorship, affiliation, or endorsement of its websites or of the products on its websites. According to the Complainant, the disclaimer on the Respondent’s websites does not clarify the Respondent’s relationship to the Complainant and does not represent a genuine effort to avoid consumer confusion.

B. Respondent

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

6. Discussion and Findings

Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain names:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

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

(iii) the Respondent has registered and is using the disputed domain names in bad faith.

A. Identical or Confusingly Similar

The Complainant has provided evidence and has thus established its rights in the IQ and HEETS trademarks.

The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) portion of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD portion of the disputed domain names.

The relevant part of the disputed domain name <iqhee.com> is therefore the second-level domain portion “iqhee”. It consists of the elements “iq” and “hee”. The “iq” element is identical to the IQ trademark, while the “hee” element is not a dictionary word and reproduces the first three letters of the HEETS trademark. The relevant part of the disputed domain name <iqsaudi.com> is the second-level domain portion “iqsaudi”, which consists of the elements “iq” and “saudi”, where the “iq” element is identical to the IQ trademark, while the “saudi” element is commonly used as a geographic term for Saudi Arabia.

Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

In view of the above, the Panel finds that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview 3.0.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names, stating that the Respondent has not been authorized by the Complainant to use the IQ trademark or to distribute the IQOS products, and that the Respondent is not carrying out a bona fide use of the disputed domain names. According to the Complainant, the Respondent uses the disputed domain names for websites that offer the Complainant’s IQOS products for sale, displays the Complainant’s IQ trademark and official product images in the websites without authorization by the Complainant and without disclosing the lack of authorization of the websites by the Complainant or the identity of their provider. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names.

The Respondent has not submitted a Response and has not alleged that it has rights or legitimate interests in the disputed domain names and has not disputed the Complainant’s allegations in this proceeding.

The disputed domain names are confusingly similar to the IQ trademark and Internet users may regard it as referring to locations where the Complainant’s IQOS products are offered for sale. The disputed domain names resolve to websites that indeed offer the Complainant’s IQOS products, display the IQ trademark and product images without identifying the supplier of the offered goods and without disclosing the lack of authorization of the websites by the Complainant or the identity of their provider. As summarized in section 2.8.1 of WIPO Overview 3.0, panels under the Policy have recognized that resellers and distributors using a domain name containing the complainant’s trademark to undertake sales of the complainant’s goods may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name, but only if they comply with certain requirements, one of which is the requirement that the reseller’s or distributor’s website must accurately and prominently disclose its relationship with the trademark holder. This requirement has not been complied with in the present case.

In view of the above and in the lack of any denial by the Respondent of it, the Panel is satisfied that it is more likely than not that the Respondent, being aware of the goodwill of the Complainant’s IQ trademark, has registered and used the disputed domain names in an attempt to exploit the trademark’s goodwill to attract Internet users to the Respondent’s websites which offer the Complainant’s products without disclosing the lack of authorization of the websites by the Complainant. To the Panel, such conduct does not appear to be legitimate so as to give rise to rights or legitimate interests of the Respondent in the disputed domain names.

Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

As discussed above, the disputed domain names fully incorporate the IQ trademark in combination with the elements “saudi” or “hee”. The Respondent does not deny that they are linked to websites that offer the Complainant’s IQOS products and display the IQ trademark and product images, falsely claiming copyright in the content of the websites and not disclosing the lack of authorization of the websites by the Complainant or the identity of their provider.

Taking the above into account, the Panel accepts that it is more likely than not that the Respondent has registered the disputed domain names with knowledge of the Complainant and targeting the IQ trademark in an attempt to attract traffic to the disputed domain names by confusing Internet users that they are reaching an official online location where the Complainant’s IQ and IQOS products are offered for sale, and has used the disputed domain names to offer the Complainant’s products for commercial gain. This satisfies the Panel that the Respondent has registered and is using the disputed domain names in bad faith.

Therefore, the Panel finds that the disputed domain name has been registered and used in bad faith.

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 names <iqhee.com> and <iqsaudi.com> be transferred to the Complainant.

Assen Alexiev
Sole Panelist
Date: April 15, 2021