WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Morris Products S.A. v. Domain Administrator / Saeed Farahani, Persian ART
Case No. D2021-3662
1. The Parties
The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Domain Administrator, United Kingdom / Saeed Farahani, Persian ART, Malaysia1 .
2. The Domain Names and Registrars
The disputed domain names <heetsmaster.com> and <iqosmaster.com> are registered with Atak Domain Hosting Internet ve Bilgi Teknolojileri Limited Sirketi d/b/a Atak Teknoloji.
The disputed domain name <tehiqos.com> is registered with Web Commerce Communications Limited dba WebNic.cc.
Collectively, Atak Domain Hosting Internet ve Bilgi Teknolojileri Limited Sirketi d/b/a Atak Teknoloji and Web Commerce Communications Limited dba WebNic.cc are hereinafter referred to as the “Registrars”, unless otherwise indicated.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 3, 2021. On November 3, 2021, the Center transmitted by email to the Registrars requests for registrar verification in connection with the disputed domain names. On November 4 and November 27, 2021, the Registrars transmitted by emails to the Center their verification responses 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 December 8, 2021, providing the registrant and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Center received two email communications from the Respondent on December 8 and December 9, 2021. The Complainant filed an amended Complaint on December 9, 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 December 10, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 30, 2021. The Respondent did not submit any formal response. Accordingly, the Center notified the commencement of Panel appointment process on January 4, 2022.
The Center appointed Gareth Dickson as the sole panelist in this matter on January 12, 2022. 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 one of the group companies affiliated to Philip Morris International Inc (“PMI”), a multinational cigarette, tobacco and smoke-free products manufacturing company, based in Switzerland. The Complainant is also based in Switzerland.
In 2014, PMI launched a smoke-free, controlled heating device system called IQOS, which forms part of their Reduced Risk Products. The IQOS system is now available in 66 markets across the world with approximately 19.1 million consumers; it is almost exclusively distributed through PMI’s official IQOS stores and websites as well as selected authorized distributors and retailers.
The Complainant is the owner of a large number of trade mark registrations, in particular, in relation to its smoke-free products and its IQOS System. Specifically, the Complainant owns trade mark registrations for the word marks IQOS (the “IQOS Mark”) and HEETS (the “HEETS Mark”) as well as various device marks which are associated with these word marks (together, the “Marks”) around the world, including:
- International trade mark registration number 1218246 for IQOS (word), registered on July 10, 2014;
- International trade mark registration number 1326410 for HEETS (word), registered on July 19, 2016;
- International trade mark registration number 1328679 for HEETS (word/device), registered on July 20, 2016;
- International trade mark registration number 1329691 for IQOS (device), registered on August 10, 2016; and
- International trade mark registration number 1338099 for IQOS (device), registered on November 22, 2016.
The disputed domain names <heetsmaster.com> and <iqosmaster.com> were registered on August 12, 2021, and the disputed domain name <tehiqos.com> was registered on October 27, 2021 (together, the “Disputed Domain Names”). Each of the Disputed Domain Names currently directs Internet users to webpages featuring an online shop, which offer the Complainant’s IQOS products as well as third party products and accessories for sale, and offers repair and maintenance services for the Complainant’s IQOS system (the “Websites”).
5. Parties’ Contentions
The Complainant argues that it has rights in each of the Marks by virtue of its ownership of various trade mark registrations for the Marks around the world. It contends that the Disputed Domain Names are confusingly similar to the Marks since the Disputed Domain Names respectively incorporate the marks HEETS and IQOS (which are recognizable in the Disputed Domain Names) in their entirety with the addition of either the term “master” or the term “teh”, which appears to be a reference to Tehran, Iran, where the Complainant alleges the Respondent is operating from, under the generic Top-Level Domain (“gTLD”) “.com”.
The Complainant confirms that the Disputed Domain Names were registered by the Respondent without its permission and that the Respondent is not a licensee of the Complainant. It alleges that the Respondent has been using the Disputed Domain Names to give the false impression that the Websites are commercially linked to the Complainant, in order to divert and/or attract customers to the Websites, for commercial gain, by creating a likelihood of confusion with the Marks, contrary to the Policy.
In addition, the Complainant notes that it does not currently sell the IQOS System in Iran. The Complainant submits that the use of the Disputed Domain Names and the Websites suggests that the Complainant has officially introduced the IQOS System to the Iranian market when it has not, as the Websites appear to be marketed towards consumers in Iran (prices are indicated in Iranian toman and the address listed on the Websites is in Iran). The Complainant contends that the Respondent is purporting to be an official online retailer for the Complainant and to offer authorized repair services, not only by using the Disputed Domain Names but also by use of other trade marks belonging to the Complainant, including the IQOS logo and its hummingbird trade mark. The Complainant notes that the Respondent also claims copyright in the material presented on the Websites, strengthening the false impression of an affiliation with the Complainant.
The Complainant submits that there is no evidence to suggest that the Respondent: has been commonly known by the Disputed Domain Names; is making, or intends to make, a legitimate noncommercial or fair use of them (the services offered on the Website, accessible via the Disputed Domain Names, having been commercial in nature); or has ever used or demonstrated preparations to use them in connection with a bona fide offering of goods or services.
The Complainant submits that the Respondent must have known of the Complainant and the Marks when it registered the Disputed Domain Names and therefore registered them and is using them in bad faith. The Marks, according to the Complainant, are well known throughout the world and are highly distinctive, making a coincidental adoption of the Disputed Domain Names by the Respondent virtually impossible.
The Respondent’s use of the Disputed Domain Names (and of the Complainant’s logos and other marks on the Websites) to offer the Complainant’s products for sale as well as to offer repair and maintenance services for the Complainant’s IQOS system further confirms that the Respondent knew of the Marks and the Complainant’s interest in them when it registered the Disputed Domain Names and that it registered them in bad faith. Furthermore, a virtually identical website was at the centre of Philip Morris Products S.A. v. Alireza Ejtehadi, WIPO Case No. D2021-2317 (<tehraniqos.net>). Given the similarities of that website to the Websites, the Complainant argues that the same person is likely to be involved and an adverse inference as to bad faith can legitimately be drawn.
The Complainant notes too that the Respondent has used a privacy service to conceal its identity for as long as possible.
Together, the Complainant submits that the Disputed Domain Names have been registered and are being used in bad faith.
The Respondent did not reply substantively to the Complainant’s contentions. It did, however, send two emails to the Center, on December 8 and December 9, 2021. Both emails stated: “I think you are hostile to us because so many other websites are selling your products, why not follow them?” and included a variety of adverts and links.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant bears the burden of proving that:
a) the Disputed Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
b) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
c) the Disputed Domain Names have been registered and are being used in bad faith.
These criteria are cumulative. The failure of the Complainant to prove any one of these elements means the Complaint must be denied.
A. Procedural Issue: Request for consolidation
The Complainant has requested that its Complaint against the Disputed Domain Names be “consolidated” into a single Complaint under Paragraph 10(e) of the Rules, which states that: “A Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules.”
Paragraph 4(f) of the Policy permits a Panel to consolidate “any or all such [domain name] disputes in its sole discretion”. Although this discretion is seemingly unfettered, it should be used to facilitate the objectives of the Policy, and even then it should be used in a manner that is neither unpredictable nor arbitrary. A consensus among Panels constituted through the Center has been reached as to the factors a Panel should consider when exercising that discretion, as set out in section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), with a view to ensuring that the domain names at issues are subject to common control, and that consolidation would be fair and equitable to all parties (i.e. not just the Complainant(s) and not just the Respondent(s)). These factors include: the registrants’ contact information including email address(es), postal address(es), or phone number(s); the content or layout of websites corresponding to the disputed domain names; the nature of the marks at issue; any naming patterns in the disputed domain names, amongst others. A Panel can also have regard to procedural efficiency in weighing these factors.
In assessing these factors, the Panel notes that:
1. the disclosed registrant name for all three of the Disputed Domain Names is the same;
2. the disputed domain names <heetsmaster.com> and <iqosmaster.com> have the same Registrar, were registered on the same date, and have a similar composition (being the Marks in addition to the word “master”, under the generic gTLD “.com”);
3. each of the Websites includes an identical logo strip at the bottom of their respective webpages and refers to a Turkish misspelling of the Complainant’s IQOS trade mark (“IKAS”)and to “Tehran IQOS”;
4. the websites accessed via the disputed domain names <heetsmaster.com> and <tehiqos.com> are substantially identical.
The Panel has had regard to the Policy and the Rules and has determined that it is appropriate to determine the Complaint in respect of the Disputed Domain Names in a single proceeding, such consolidation being fair and equitable to all parties.
B. Identical or Confusingly Similar
The Panel accepts that the Complainant is the owner of, and therefore has rights in, each of the Marks. Section 1.7 of the WIPO Overview 3.0 provides that: “[I]n cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”.
Section 1.8 of the WIPO Overview 3.0 further provides that: “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”.
The Panel therefore finds that the Disputed Domain Names are confusingly similar to the Marks, since the marks HEETS or IQOS are recognisable within each of the Disputed Domain Names. The addition of the terms “master” in the disputed domain names <heetsmaster.com> and <iqosmaster.com>, or “teh” in the disputed domain name <tehiqos.com> do not prevent a finding of confusing similarity, nor does the addition of the gTLD “.com.
Accordingly, the Panel finds that the Disputed Domain Names are confusingly similar to trade marks in which the Complainant has rights.
C. Rights or Legitimate Interests
Although a complainant is required to demonstrate that a respondent has no rights or legitimate interests in respect of the domain name, as explained in section 2.1 of the WIPO Overview 3.0, the consensus view of previous UDRP panels is that where a complainant establishes 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.
The use of a third party’s trade mark to offer genuine goods or services can in some circumstances be evidence of a bona fide offering of goods and services and thus constitute a legitimate interest in a domain name (also see Section 2.8.1 of the WIPO Overview 3.0). For the purposes of the Policy, those circumstances have been identified in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“Oki Data”), which sets out four requirements which must all be met for the use to be considered legitimate. These requirements may be stated briefly as follows:
- the Respondent must actually be offering the goods or services at issue;
- the Respondent must use the site to sell only the trade marked goods;
- the site must accurately disclose the registrant’s relationship with the trade mark owner; and
- the Respondent must not try to corner the market in all domain names, thus depriving the trade mark owner of reflecting its own mark in a domain name.
Even assuming that the goods offered by the Respondent via the Disputed Domain Names are genuine goods first put on the market by the Complainant or with its consent, the Respondent cannot benefit from Oki Data since:
- the goods offered under the Disputed Domain Names are not limited to those bearing the Complainant’s marks, but include goods which compete directly with goods sold under those marks; and
- the Respondent does not appear to have accurately disclosed the lack of any relationship between it and the Complainant, notwithstanding that a commercial relationship will be inferred by the Respondent’s use of the Complainant’s trade marks in the Disputed Domain Names.
Furthermore, the Complainant has stated that the Respondent has used the Complainant’s official product images and marketing materials on the Websites, without consent. The Complainant has also confirmed that the Respondent is not an authorised retailer and that there is no association between the Respondent and the Complainant. Such use of the Complainant’s Marks does not amount to a bona fide offering of good and services nor is it a legitimate noncommercial or fair use of the Disputed Domain Names, and, as such, is further evidence of the Respondent’s bad faith.
In the current proceedings, therefore, the Complainant has established its prima facie case. The evidence before the Panel is that none of the Marks are generic or descriptive but that they enjoy a degree of inherent distinctiveness that makes their coincidental adoption by the Respondent highly unlikely. The fact that the Respondent incorporated two of the Marks into domain names on the same day puts the question beyond any doubt. The Complainant states that it has not given the Respondent permission to use the Marks, in a domain name or otherwise, and submits that the Respondent has not been commonly known by the Disputed Domain Names.
There is no evidence that the Respondent has acquired any common law rights to use the Marks, is commonly known by the Marks or has chosen to use the Marks in the Disputed Domain Names in any descriptive manner or is making any use of the Disputed Domain Names that would establish rights or legitimate interests as a result of a nocommercial or fair use of it.
The Respondent’s informal communications did not offer any noncommercial explanation for the registration of the Disputed Domain Names and provided no evidence as to the Respondent’s rights or legitimate interests therein. By failing to respond substantively, the Respondent has failed to refute the Complainant’s prima facie case that it has met its burden under the second UDRP element.
As clearly stated in section 2.1 of the WIPO Overview 3.0, “a panel’s assessment will normally be made on the basis of the evidence presented in the complaint and any filed response. The panel may draw inferences from the absence of a response as it considers appropriate, but will weigh all available evidence irrespective of whether a response is filed”. Having reviewed and weighed the available evidence, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names.
D. Registered and Used in Bad Faith
The Panel notes that the Disputed Domain Names were registered in 2021, several years after the Marks were first registered and the Complainant had begun selling products under those Marks. The Panel therefore accepts that the Disputed Domain Names were chosen by reference to the Marks.
As a result, and in the absence of evidence from the Respondent that the similarity of the Disputed Domain Names to the Marks is coincidental, the Panel must conclude that the Respondent knew of the Complainant’s rights in the Marks when it registered the Disputed Domain Names. The Panel’s finding is reinforced given the use of the Disputed Domain Names to feature web stores allegedly offering the Complainant’s products, amongst others, and the pattern of registrations in which the Respondent has engaged, noting the registration of these three confusingly similar disputed domain names.
The Panel therefore finds that the Respondent’s registration of the Disputed Domain Names was in bad faith since it attempted to appropriate for the Respondent, without the consent or authorisation of the Complainant, rights in the Complainant’s Marks.
The Disputed Domain Names are also being used in bad faith.
They are being used for a commercial purpose that involves using the Marks to mislead Internet users (in particular those seeking the Complainant) to a web store allegedly offering goods in a territory where the Complainant is not yet active, whilst representing that there is a connection to the Complainant.
The Respondent has not sought to explain its registration and use of the Disputed Domain Names and has attempted to conceal its identity. There is also no conceivable use of the Disputed Domain Names by the Respondent that would not be illegitimate and therefore there is no basis for the Panel to conclude that the Respondent’s use of the Disputed Domain Names is justified.
Furthermore, while the existence of other UDRP proceedings involving similar (or even identical) websites might be a relevant factor in another complaint, the Panel is not able in this Complaint, on the basis of the submissions made to it, to accept that the Respondent in the earlier cited WIPO decision is necessarily the same as the Respondent in this proceeding. The identity of the websites in the two complaints could be explained by a third party making those websites available to anyone who wants them, no doubt in exchange for some commission or other remuneration. The Panel does not exclude the possibility that these two Respondents are in fact the same person, but more cogent evidence to support that allegation is required before it can be accepted.
Therefore, and on the basis of the information available to it, the Panel finds that the Respondent’s use of the Disputed Domain Names is without justification and is inconsistent with the Complainant’s exclusive rights in the Marks. Consideration of these and other factors militates in favour of a finding of bad faith.
The Panel finds that the Respondent has registered and is using the Disputed Domain Names 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 Names, <heetsmaster.com>, <iqosmaster.com>, and <tehiqos.com> be transferred to the Complainant.
Date: January 27, 2022
1 For purposes of completeness, the Panel notes that the WhoIs for the disputed domain names <heetsmaster.com> and <iqosmaster.com> both reflected “Domain Administrator” as the registrant name, whereas the registrant organization was, respectively, “Registrant of heetsmaster.com” and “Registrant of iqosmaster.com”. Lastly, the WhoIs for the disputed domain name <tehiqos.com> reflected the information confirmed by the Registrar, namely “Saeed Farahani, Persian ART”. The Registrar for the disputed domain names <heetsmaster.com> and <iqosmaster.com> disclosed “Saeed Farahani, Persian ART” as the underlying registrant. Thus, the Panel will treat “Saeed Farahani, Persian ART” as the Respondent for purposes of the Policy.