WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris Products S.A. v. zaid mandre
Case No. D2021-1540
1. The Parties
The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is zaid mandre, India.
2. The Domain Name and Registrar
The Disputed Domain Name <iq-heet-du.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 18, 2021. On May 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 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 May 19, 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 amended Complaint on May 20, 2021.
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 May 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 10, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 11, 2021.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on June 17, 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 a part of the group of companies affiliated with Philip Morris International Inc. (“PMI”). PMI is a leading international tobacco company, with products sold in more than 180 countries.
PMI has developed IQOS. IQOS is a controlled heating device into which specially designed tobacco products under the brand names HEETS and HEATSTICKS are inserted and heated to generate flavorful nicotine-containing aerosol. The IQOS products were first launched in Nagoya, Japan, in 2014. To date, the IQOS products are available in 64 markets across the world. The IQOS products are almost exclusively distributed through PMI’s official stores and websites as well as authorized distributors and retailers.
The Complainant owns a large portfolio of trademarks with the term HEET, IQ and IQOS. Among them, but by no means limited to, are the following:
- HEET (word) United Arab Emirates Registration No. 253929-31 registered on March 5, 2018;
- HEETS (word) United Arab Emirates Registration No. 256864 registered on December 25, 2017;
- IQ (word) United Arab Emirates Registration No. 322648 registered on December 18, 2019;
- IQOS (word) United Arab Emirates Registration No. 211139 registered on March 16, 2016; and
- IQOS (word/stylized) United Arab Emirates Registration No. 257763 registered on April 22, 2018.
The Respondent registered the Disputed Domain Name on August 20, 2020. At the time of filing the Complaint, the Disputed Domain Name resolves to an online shop allegedly selling and offering the Complainant’s IQOS System, as well as competing third party products of other commercial origin especially in Dubai, in the United Arab Emirates (the “Website”). At the time of the Decision, the Disputed Domain Name does not resolve to an active website.
5. Parties’ Contentions
The Complainant´s contentions can be summarized as follows.
Identical or confusingly similar
The Complainant contend that the Disputed Domain Name is confusingly similar to its HEET and IQ trademark registrations. The Disputed Domain Name reproduces the HEET and IQ trademarks in its entirety, in addition to the geographical abbreviation for the city Dubai, in United Arab Emirates i.e. “du”.
Thus, the Complainant contends that any Internet users when visiting a website provided under the Disputed Domain Name will reasonably expect to find a website commercially linked to the owner of the HEET and IQ trademarks.
Rights or legitimate interests
The Complainant states that the Respondent lacks any right or legitimate interest in the Disputed Domain Name. The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register a domain name incorporating its HEET and IQ trademarks.
The Complainant further alleges that the Respondent is not making a legitimate noncommercial or fair use of the Disputed 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. Firstly, the Respondent is not an authorized distributor or reseller of the IQOS System. Secondly, the Website is selling competing tobacco products and/or accessories of other commercial origin. Moreover, 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.
In addition, the Website further uses the Complainant’s official product images.
Finally, the disclaimer offered at the bottom of the Website is not presented in a clear and sufficiently prominent manner.
Registration and use in bad faith
The Complainant contends that it is evident from the Respondent’s use of the Disputed Domain Name that the Respondent knew of the Complainant’s HEET and IQ trademarks when registering the Disputed Domain Name. The Respondent identified itself as “IQOS HEETS Dubai” on the Website, which similarly includes the Complainant’s registered HEET and IQ trademarks without authorization and further perpetuates the false impression of an official commercial relationship between the Website and the Complainant. The Respondent started offering the Complainant’s IQOS System immediately after registering the Disputed Domain Name.
Moreover, by reproducing the Complainant’s registered trademark 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.
Additionally, the Respondent is not only using the Complainant’s HEET and IQ 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.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which the Complainant must satisfy with respect to the Disputed Domain Name at issue in this case:
(i) the Disputed Domain Names is 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 Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Based on the evidence submitted, the Panel finds that the Disputed Domain Name is confusingly similar to the Complaint’s trademarks. The Disputed Domain Name contains the Complainant’s HEET and IQ trademark in its entirety.
The addition of the hyphens and the abbreviation of Dubai, “du” does not prevent a finding of confusing similarity between the Complainant’s trademark and the Disputed Domain Name.
In addition, the addition of the generic Top-Level Domain (“gTLD”) “.com” does not change this finding, since the gTLD is generally disregarded in such an assessment of confusingly similarity.
Therefore, this Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:
“(i) before any notice to you of the dispute, your use of, demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service at issue.”
There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the trademarks. The Complainant has (prior) rights in the trademarks which precede the Respondent’s registration of the Disputed Domain Name.
The Respondent has failed to show that it has acquired any rights with respect to the Disputed Domain Name or that the Disputed Domain Name is used in connection with a bona fide offering of goods and services.
In addition, the Panel finds that the similarity of the Disputed Domain Name comprising the Complainant’s HEETS and IQ trademarks and the geographical abbreviation “du” for Dubai coupled with Respondent’s use of the Website at the Disputed Domain Name purporting to be an official online retailer of the Complainant in Dubai and giving a false impression of association with the Complainant carries a high risk of association or affiliation with the Complainant’s trademark which is not avoided by the disclaimer. See sections 2.5.1 and 2.5.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The Respondent had the opportunity to demonstrate his rights or legitimate interests, but he did not reply to the Complainant’s contentions.
As such the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The Disputed Domain Name was registered in 2020; six years after the Complainant obtained its United Arab Emirates trademark registration for its trademark IQOS. The fact that the Respondent started offering the Complainant’s products at his website immediately after registering the Disputed Domain Name clearly demonstrates that the Respondent was aware of the Complainant’s IQOS and HEETS branded products when registering the Disputed Domain Name.
Furthermore, the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register the Disputed Domain Name incorporating its trademarks. The Respondent is not an authorized reseller of the Complainant’s products.
In addition, the Complainant submitted evidence that the Respondent’s Website creates the impression that the online shop is an official dealer of the Complainant’s products. Thus, Internet users might have been under the impression that it is a website created and operated by a distributor or reseller of the Complainant with the Complainant’s consent.
Moreover, this Panel perceived that the Website linked to the Disputed Domain Name includes a disclaimer. However, this cannot rectify the Respondent’s bad faith from providing the Complainant’s products without the Complainant´s authorization. Besides, such disclaimer is not displayed in a clear and prominent way. On the contrary, this disclaimer only denotes that the Respondent was well aware of the risk of confusion by Internet users (see section 3.7 of the WIPO Overview 3.0).
The circumstances in the case before the Panel indicate that the Respondent was aware of the Complainant’s trademarks when registering the Disputed Domain Name and it has created a likelihood of confusion with the Complaint’s trademarks and website in order to attract Internet users for his own commercial gain, within the sense of paragraph 4(b)(iv) of the Policy.
Therefore, taking all circumstances into account and for all above reasons, the Panel concludes that the Respondent has registered and used the Disputed Domain Name in bad faith.
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 <iq-heet-du.com> be transferred to the Complainant.
Pablo A. Palazzi
Date: July 1, 2021