The Complainant is Philip Morris Products S.A. of Neuchâtel, Switzerland represented by Boehmert & Boehmert, Germany.
The Respondents are (1) Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America (“United States”) / Munawar Ali of Dubai, United Arab Emirates, and (2) Perfect Privacy, LLC, of Jacksonville, Florida, United States / Mohammad Ali Bhutto of Larkana, Pakistan. 2. The Domain Names and Registrars
The disputed domain name is registered with GoD, LLC (“GoDaddy”) and the disputed domain name is registered with Network Solutions, LLC (“Network Solutions”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 30, 2019. On January 30, 2019, the Center transmitted by email to GoDaddy a request for registrar verification in connection with . On January 30, 2019, GoDaddy transmitted by email to the Center its verification response disclosing registrant and contact information for that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 1, 2019 providing the registrant and contact information disclosed by GoDaddy, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 6, 2019. Within the amended Complaint, the Complainant requested that the additional domain name be added to this proceeding, identifying Perfect Privacy, LLC as the named Respondent for that disputed domain name.
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 Respondent Munawar Ali (registrant of ) of the Complaint, and the proceedings concerning that disputed domain name commenced on February 8, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 28, 2019. Respondent Munawar Ali did not submit any response. Accordingly, the Center notified this Respondent’s default on March 1, 2019. The Center appointed Evan D. Brown as the sole panelist in this matter on March 11, 2019. 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.
On March 26, 2019, the Center transmitted by email to Network Solutions a request for registrar verification in connection with . On March 26, 2019, Network Solutions transmitted by email to the Center its verification response disclosing registrant and contact information for that differed from the named Respondent and contact information in the amended Complaint. The email from Network Solutions identified the registrant of as Mohammad Ali Bhutto.
On April 2, 2019, the Panel issued a procedural order that informed the Complainant that Mohammad Ali Bhutto is the registrant of , and requested the Complainant to provide relevant arguments or evidence demonstrating that Respondent Munawar Ali and Respondent Mohammed Ali Bhutto are, in fact, the same person or entity and/or that both domain names are under common control. The Complainant made a supplemental filing on April 4, 2019, further amending the Complaint to add Mohammad Ali Bhutto as an additional Respondent, and presenting evidence and argument that the disputed domain names and and the corresponding websites are subject to common control. Such arguments and evidence were comprised of the following:
- After the Complaint was filed (and presumably after receiving notice of the action), the Respondent (as the registrant of ) caused web visitors to that disputed domain name to be redirected to a website located at .
- The websites found at and were to a large degree identical, including having the same prices and discounts for the products offered.
- The Respondent (as the registrant of ) did not file a response and thereby did not object to the Complainant’s arguments that the disputed domain names and websites are under common control.
- Consolidation is fair and equitable to all parties.
On April 9, 2019, the Panel issued a second procedural order in which, in accordance with paragraph 10(e) of the Rules the Panel, it permitted consolidation of the two disputed domain names and in this proceeding, as well as the addition of Respondent Mohammad Ali Bhutto. The second procedural order also provided that Respondent Mohammad Ali Bhutto (as registrant of ) be given until April 30, 2019 to file a Response. No such Response was filed. 4. Factual Background
The Complainant is an affiliate of Philip Morris International Inc. (“PMI”), a leading international tobacco company. PMI has undertaken a course to transform its business from combustible cigarettes to electronic products.
One of these products is branded as IQOS. The Complainant owns a number of trademark registrations for IQOS, including United Arab Emirates Registration No. 211137, which was issued on June 12, 2016.
The Complainant also makes and sells specially designed tobacco products under the brand names “HEETS” and “HeatSticks” which are inserted into IQOS products and heated to generate a flavorful nicotine-containing aerosol. The Complainant owns trademark registrations for HEETS (in both word and stylized form – United Arab Emirates Registration Nos. 256862 and 256865, issued on July 20, 2016 and July 10, 2016, respectively), and HEATSTICKS (United Arab Emirates Registration No. 211145, issued March 16, 2016).
The disputed domain name was registered on December 4, 2018 and was registered on February 1, 2019. Both disputed domain names have been used – without the Complainant’s authorization – to set up online shops offering the Complainant’s IQOS products. But the Complainant’s IQOS products are not currently sold in the United Arab Emirates, even though the Respondents’ websites suggest they are operated by an official dealer of IQOS branded products in the United Arab Emirates. The websites also use a high number of the Complainant’s copyright protected official product images and marketing materials. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain names are identical or confusingly similar to the Complainant’s trademarks; that the Respondents have no rights or legitimate interests in respect of the disputed domain names; and that the disputed domain names were registered and are being used in bad faith. B. Respondents
The Respondents did not reply to the Complainant’s contentions. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondents have no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
All three of these elements have been met in this case. A. Identical or Confusingly Similar
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. See, Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen,WIPO Case No. D2014-0657. The Complainant has demonstrated its rights because it has shown that it is the owner of the registered marks IQOS, HEET, and HEATSTICKS as noted above.
The incorporation of a trademark in its entirety is sufficient to establish that a disputed domain name is identical or confusingly similar to the Complainant’s registered mark. See, Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505. In this case, the disputed domain name contains the Complainant’s trademark IQOS in its entirety. The addition of the Top-Level Domain “.com” to this disputed domain name does not avoid confusing similarity.
The domain name does not incorporate the Complainant’s exact mark (HEET or HEATSTICKS) – but one can reasonably find them to be confusingly similar. Especially in this context – this Respondent used the disputed domain name specifically to direct Internet users to a webpage selling products of the Complainant that use HEET- and HEATSTICKS-branded products. This conduct suggests that this Respondent relied on Internet user confusion to direct Internet users to its website. This evidence of intent to confuse on the part of this Respondent reinforces the conclusion that the disputed domain name is confusingly similar to Complainant’s trademark. Bayer Healthcare LLC v. Admin, Domain,WIPO Case No. D2016-2342.
The content of a website associated with a disputed domain name is usually disregarded by panels when assessing confusing similarity under the first element. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), paragraph 1.15. In some instances, however, panels have taken note of the content of the website associated with a disputed domain name to confirm confusing similarity whereby it appears prima facie that the respondent seeks to target a trademark through the disputed domain name. Id. This case presents such an instance. B. Rights or Legitimate Interests
The Complainant will be successful under this element of the Policy if it makes a prima facie showing that the Respondents lack rights or legitimate interests in the disputed domain names, and if that prima facie showing remains unrebutted by the Respondents. The Complainant asserts, among other things, that the Respondents are not commonly known by the words comprising the disputed domain names, and the Respondents do not use the disputed domain names in connection with a bona fide offering of goods or services (i.e., using the disputed domain names to redirect Internet users to websites that sell Complainant’s products without authorization).
These assertions establish the Complainant’s prima facie case. The Respondents have not filed any response to rebut the prima facie case, and, seeing no other basis in the record to overcome what the Complainant has established, the Panel finds that the Complainant has satisfied this second Policy element.
The Complainant addresses the issue of how Respondent Munawar Ali could, but does not, have rights or legitimate interests in the domain name under the test set out in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. This Respondent, who is using the disputed domain name to sell non-counterfeit (albeit gray market) goods of the Complainant would be making a bona fide offering of goods, and thus have a legitimate interest in the disputed domain name, provided that:
(i) it is actually offering the goods at issue;
(ii) it is using the associated website to sell only the trademarked goods;
(iii) the website accurately and prominently discloses this Respondent’s relationship with the Complainant; and
(iv) it must not try to “corner the market” in domain names that reflect the Complainant’s trademarks.
The Complainant’s arguments against Oki Data protection of this Respondent’s conduct center on the third element of the test, and include the following assertions:
- It points out that the domain name in itself suggests at least an affiliation with the Complainant and its IQOS trademark, as the domain name wholly reproduces the Complainant’s registered IQOS trademark together with the geographic term “Dubai”.
- The associated website, without authorization, prominently presents the Complainant’s registered stylized trademark at the top 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 uses the Complainant’s official product images and marketing materials without authorization, while at the same time falsely claiming copyright in this material. The Complainant argues that this illegitimate and false claim of rights in the Complainant’s official copyright protected marketing material further supports the false impression, that the website is endorsed by the Complainant.
- The website includes no information regarding the identity of the provider of the website, which is only identified as “IQOS Dubai” (e.g. in the Terms of Use provided on the website), being a name which similarly includes the Complainant’s registered IQOS trademark (without authorization) and further serves to perpetuate the false impression of a commercial relationship between the website and the Complainant.
- As IQOS products are primarily distributed through official stores, so in this case Internet users and relevant consumers are misled regarding the relationship between the website and the Complainant.
- The illegitimacy of the Respondent’s use of the disputed domain name is further shown by the fact that the Complainant does not currently offer for sale its IQOS-branded products in the territory of the United Arab Emirates, and the on-line shop provided under the disputed domain name creates the false impression that the Complainant has officially introduced the IQOS products into that market.
The Panel agrees that such use of the disputed domain name cannot be considered a bona fide offering of goods, and does not establish a legitimate interest on behalf of the Respondent under the Oki Data framework. C. Registered and Used in Bad Faith
The Complaint succeeds under the third element as well. This case illustrates the example of evidence of bad faith set out in paragraph 4(b)(iv) of the Policy, namely, using a recognized mark to “attempt[ ] to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.” Given that the Respondents have from the start used the disputed domain names to sell the Complainant’s products, there is no question of their knowledge of the Complainant, its products, and its trademarks. From that knowledge and those sales, targeting the value of those marks may be readily inferred. See, Iveco S.p.A. v. Cong ty TNHH san xuat va TM Khang Thinh, NA,WIPO Case No. D2015-2249. 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, and be transferred to the Complainant.
Evan D. Brown
Sole Panelist
Date: May 2, 2019
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