WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / Farvez Bhuiyan, Heets Dubai ae

Case No. D2021-1194

1. The Parties

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

The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Farvez Bhuiyan, Heets Dubai ae, United Arab Emirates.

2. The Domain Name and Registrar

The disputed domain name <iqosheetsae.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 19, 2021. On April 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 19, 2021, 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 April 20, 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 April 21, 2021, of receipt by Center.

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 April 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 20, 2021. The Respondent submitted an informal communication to the Center on April 20, 2021.

Upon request of the Complainant, the proceeding was suspended on May 3, 2021, pursuant to the Rules, paragraph 17. On May 12, 2021, upon request of the Complainant, the proceeding was reinstituted with a due date for Response of May 29, 2021.

The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent’s default on May 31, 2021.

The Center appointed Federica Togo as the sole panelist in this matter on June 11, 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 the registered owner of several trademarks worldwide consisting of or containing the term IQOS, e.g., IQOS (word), United Arab Emirates Registration No. 211139, registered on March 16, 2016 for services in class 34; and it is also the owner of several trademarks worldwide consisting or containing the term HEETS, e.g., HEETS (word), United Arab Emirates Registration No. 256864, registered on December 25, 2017 for services in class 34.

It results from the information disclosed by the Registrar that the disputed domain name was registered on February 17, 2021.

Furthermore, the undisputed evidence provided by the Complainant shows that the disputed domain name resolves to an online shop allegedly selling and offering the Complainant’s IQOS System, as well as third party competing tobacco products (and other products) of other commercial origin.

5. Parties’ Contentions

A. Complainant

The Complainant is a company, which is part of the group of companies affiliated to Philip Morris International Inc., which is a leading international tobacco company, with products sold in approximately 180 countries.

The Complainant has developed and sold a number of Reduced Risk Products that present, are likely to present, or have the potential to present less risk of harm to smokers who switch to those products versus continued smoking. One of these products is called IQOS, which is a precisely controlled heating device into which specially designed tobacco products under the brand names “HEETS” or “HeatSticks” are inserted and heated to generate a flavorful nicotine-containing aerosol (collectively referred to as the IQOS System). The IQOS System was first launched in Japan in 2014 and is today available in key cities in around 64 markets across the world. It has achieved considerable international success and reputation and approximately 17.6 million relevant consumers using the IQOS System worldwide. To date, the IQOS System has been almost exclusively distributed through official IQOS stores, websites, and selected authorized distributors and retailers.

The Complainant contends that its trademarks are well-known.

It results from the Complainant’s undisputed allegations that the disputed domain name resolves to an online shop allegedly selling and offering the Complainant’s IQOS System, as well as third party competing tobacco products (and other products) of other commercial origin. The website to which the disputed domain name resolves is prominently using the Complainant’s registered IQOS and HEETS trademarks of the Complainant. Moreover, the fact that the website is indicating all prices in United Arab Emirates dirham currency, as well as presenting the designation “IQOS HEETS AE is one of the best Vape Shop in UAE”, clearly indicates that the website is directed to the United Arab Emirates. The website is further using a number of the Complainant’s official product images without the Complainant’s authorization, while at the same time providing a copyright notice at the bottom of the website claiming copyright in the material presented on the website and thereby strengthening the false impression of an affiliation with the Complainant. The website does not show any details regarding the provider of the website (which is only identified as “IQOS HEETS AE”, being a name which includes the Complainant’s registered IQOS and HEETS trademarks (without authorization) and further serves to perpetuate the false impression of an official commercial relationship with the Complainant) nor does it acknowledge the Complainant as the real brand owner of the IQOS System, leaving the Internet user under the false impression that the online shop provided under the website is that of the Complainant or that it is connected to that of the Complainant or one of its official distributors, which it is not. The provider of the website is using the Complainant’s IQOS and HEETS trademarks in its name in circumstances where the provider of the website is not known to the Complainant, nor is it authorised to use the Complainant’s IQOS and HEETS trademarks.

The Complainant contends that the disputed domain name is confusingly similar to its IQOS and HEETS trademarks, since it reproduces the IQOS and HEETS trademarks in its entirety, in addition to the geographical abbreviation for the United Arab Emirates, i.e. “ae”. Any Internet user when visiting a website provided under the disputed domain name will reasonably expect to find a website commercially linked to the owner of the IQOS and HEETS trademarks. This unlawful association is exacerbated by the use of the Complainant’s official product images without the Complainant’s authorization.

The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. In particular, 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 and HEETS trademarks (or a domain name which will be associated with these trademarks). According to the Complainant’s non‑contested allegations, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. On the contrary, its 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. Firstly, the Respondent is not an authorized distributor or reseller of the Complainant’s IQOS System. Secondly, the website is selling competing tobacco products and/or accessories of other commercial origin. Thirdly, the website provided under the disputed domain name does not meet the requirements set out by numerous UDRP panel decisions for a bona fide offering of goods. In the present case, the Respondent is not only offering the Complainant’s products but also competing tobacco products and accessories of other commercial origin. This is sufficient to exclude a legitimate interest in the form of a bona fide offering of goods. In addition, the disputed domain name in itself suggests at least an affiliation with the Complainant and its IQOS and HEETS trademarks, as the disputed domain name wholly reproduces the Complainant’s registered IQOS and HEETS trademarks together with the geographical abbreviation for the United Arab Emirates, i.e. “ae”.

Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. It is evident from the Respondent’s use of the disputed domain name that the Respondent knew of the Complainant’s IQOS and HEETS trademarks when registering the disputed domain name. By reproducing the Complainant’s registered trademarks in the disputed domain name and the title of the website, the Respondent’s website clearly suggests the Complainant or an affiliated dealer of the Complainant as the source of the website, which it is not. This suggestion is further supported by the Respondent’s use of the Complainant’s official product images, accompanied by a copyright notice claiming the copyright for the website and its contents. In addition, the Respondent is not only using the Complainant’s IQOS and HEETS trademarks for the purposes of offering for sale the IQOS System, but also for purposes of offering for sale third party products of other commercial origin. Such abusive use of the Complainant’s IQOS and HEETS trademarks for purposes of promoting competing products is a clear-cut trademark infringement and constitutes clear evidence of the Respondent’s bad faith.

B. Respondent

The Respondent did not substantively reply to the Complainant’s contentions. However, the Respondent did an informal communication to the Center on April 20, 2021, indicating:

“Hello,
We will move our site to a new web address in a short time.
If we remove our site from this domain, is the issue will be solved?
Please let us know.
Thank you so much to inform us about this.”

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 and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy requires a complainant to prove each of the following three elements in order to obtain an order that the disputed domain name be transferred or cancelled:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.

The Panel will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

It results from the evidence provided that the Complainant is the registered owner of various trademark registrations for IQOS and HEETS. Reference is made in particular to United Arab Emirates Registration No. 211139, registered on March 16, 2016, and to United Arab Emirates Registration No. 256864, registered on December 25, 2017.

UDRP panels have found that a disputed domain name is confusingly similar to a complainant’s trademark where the disputed domain name incorporates the complainant’s trademark in its entirety (see, e.g., Accenture Global Services Limited v. WhoisGuard Protected, WhoisGuard, Inc. / William Douglas, WIPO Case No. D2021-0774; Compagnie Générale des Etablissements Michelin v. Milen Radumilo, WIPO Case No. DCO2020-0090; LEGO Juris A/S v. ken Teo, WIPO Case No. D2020-2380; Sanofi v. WhoisGuard Protected, WhoisGuard, Inc. / Todd Peter, WIPO Case No. D2020-2060; Virgin Enterprises Limited v. Domains By Proxy LLC, Domainsbyproxy.com / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-1923; F. Hoffmann-La Roche AG v. Jason Barnes, ecnopt, WIPO Case No. D2015-1305; Compagnie Générale des Etablissements Michelin v. Christian Viola, WIPO Case No. D2012-2102; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack, WIPO Case No. D2015-0070; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies, WIPO Case No. D2015-0812; Rhino Entertainment Company v. DomainSource.com, Inc., WIPO Case No. D2006-0968; SurePayroll, Inc. v. Texas International Property Associates, WIPO Case No. D2007-0464; and Patagonia, Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-1409).

This Panel shares this view and notes that the Complainant’s registered trademarks IQOS and HEETS are fully included in the disputed domain name, followed by the letters “ae” (which might be seen as the geographical abbreviation for the United Arab Emirates). In addition, it is the view of this Panel that the combination of the two trademarks IQOS and HEETS and the addition of the terms “ae” in the disputed domain name cannot exclude the confusing similarity between the disputed domain name and the Complainant’s trademarks, since the Complainant’s trademarks are clearly recognizable in the disputed domain name (see, e.g., Virgin Enterprises Limited v. Domains By Proxy LLC, Domainsbyproxy.com / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-1923).

Finally, the generic Top-Level-Domain (“gTLD”) “.com” of the disputed domain name may be 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 1.11.1).

In the light of the above, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests to the disputed domain name. In the Panel’s view, based on the undisputed allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name.

According to the Complaint, which has thus remained unchallenged, the Complainant has not authorized the Respondent’s use of the trademarks IQOS and HEETS, e.g. by registering the disputed domain name comprising said trademarks entirely.

Furthermore, the Panel notes that there is no evidence showing that the Respondent might be commonly known by the disputed domain name in the sense of paragraph 4(c)(ii) of the Policy.

Finally, it results from the Complainant’s non-contested evidence that the disputed domain name resolves to a website on which both the Complainant’s IQOS System and competing goods are sold. Since this use is clearly commercial, it cannot be considered a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue pursuant to paragraph 4(c)(iii) of the Policy. Furthermore, such use cannot be qualified a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy and the well‑accepted factors set out in the “Oki Data test” (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903) as it is misleading and diverting consumers, making them erroneously believe that the Respondent is an authorized dealer, retailer, or reseller of the Complainant’s IQOS System, and is authorized to promote sales of the Complainant’s IQOS System alongside of competing goods. This is reinforced by the following facts: (1) the Respondent did not add any note, information, or disclaimer pointing out that it actually has no relationship with the Complainant; (2) the website is accessible under a domain name that comprises the Complainant’s trademarks entirely. See also WIPO Overview 3.0, section 2.8.1: “Panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the ‘Oki Data test’, the following cumulative requirements will be applied in the specific conditions of a UDRP case: (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 Oki Data test does not apply where any prior agreement, express or otherwise, between the parties expressly prohibits (or allows) the registration or use of domain names incorporating the complainant’s trademark.”

Furthermore, the nature of the disputed domain name carries a risk of implied affiliation, since the disputed domain name contains the Complainant’s trademarks IQOS and HEETS followed by the letters “ae” – which might be seen as the geographical abbreviation for the United Arab Emirates – and geographic terms are seen as tending to suggest sponsorship or endorsement by the trademark owner (see WIPO Overview 3.0, section 2.5.1).

It is acknowledged that once the Panel finds such prima facie case is made, the burden of production shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence, this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant is therefore deemed to have satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith. One of these circumstances is that the Respondent by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location or of a product or service on its website or location (paragraph 4(b)(iv) of the Policy).

It is the view of this Panel that these circumstances are met in the case at hand.

It results from the Complainant’s documented allegations that the disputed domain name resolves to a website on which both the Complainant’s IQOS System and competing goods are sold. For the Panel, it is therefore evident that the Respondent positively knew the Complainant’s mark. Consequently, and in the absence of any evidence to the contrary, the Panel is convinced that the Respondent also knew that the disputed domain name included the Complainant’s trademarks when it registered the disputed domain name. Registration of the disputed domain name which contains a third party’s mark, in awareness of said mark and in the absence of rights or legitimate interests amounts to registration in bad faith (see, e.g., Philip Morris Products S.A. v. Cihan Atalay, WIPO Case No. D2020-2169; F. Hoffmann-La Roche AG v. Jatin Jani, Expired Domains LLC, WIPO Case No. D2019-0344; KOC Holding A.S. v. VistaPrint Technologies Ltd, WIPO Case No. D2015-1910; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies, WIPO Case No. D2015-0812; The Chancellor, Masters and Scholars of the University of Oxford v. Almutasem Alshaikhissa, WIPO Case No. D2014-2100; and Deutsche Lufthansa AG v. Mustermann Max, Muster AG, WIPO Case No. D2015-1320).

The finding of bad faith registration and use is supported by the further circumstances resulting from the case at hand which are (i) the Respondent’s failure to submit a response; (ii) its failure to provide any evidence of actual or contemplated good-faith use; (iii) the implausibility of any good faith use to which the domain name may be put; and (iv) the Respondent concealing its identity behind a privacy shield.

In the light of the above the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to paragraph 4(a)(iii) 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 <iqosheetsae.com> be transferred to the Complainant.

Federica Togo
Sole Panelist
Date: June 25, 2021