The Complainant is Philip Morris Products S.A., Switzerland, represented by Boehmert & Boehmert, Germany.
The Respondent is Contact Privacy Inc. Customer 0155380334, Canada / Goerge martirosyan, iqusdubai, United Arab Emirates. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 15, 2019. On August 16, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 22, 2019, 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 August 22, 2019 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 August 22, 2019.
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 August 23, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 12, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 13, 2019.
The Center appointed Luiz E. Montaury Pimenta as the sole panelist in this matter on September 24, 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. 4. Factual Background
The Complainant is a company affiliated to Philip Morris International Inc (“PMI”), leading international tobacco company with products sold in more than 180 countries.
The Complainant has developed a number of different products, including a product called “IQOS”, which is a precisely controlled heating device into which specially design tobacco products under the name “Heets” or “Heatsticks” are inserted and heated to generate a flavorful nicotine-containing aerosol.
The Complainant holds trademark registrations for IQOS and HEETS in various jurisdictions, including the United Arab Emirates and several international registrations (e.g., United Arab Emirates registration number 211137, registered on June 12, 2016).
The disputed domain name was registered on August 4, 2019. According to the evidence provided by the Complainant, the disputed domain name resolves to a website offering the Complainant’s products, as well as competing products of other commercial origin. 5. Parties’ Contentions A. Complainant
The Complainant alleges that the disputed domain name contains a confusingly similar approximation of their trademark.
The Complainant alleges that the term “iqus” is highly similar to their registered trademark IQOS, from both a visual and phonetic point of view. The Complainant adds that the disputed domain name may also serve to divert traffic away from the Complainant, as the result of a misspelling of their registered trademark.
The added geographical wording “dubai” and use of the generic Top-Level Domain (“gTLD”) “.com” are not enough elements to distinguish the disputed domain name from the Complainant’s mark, as they do not dispel its confusing similarity.
Further on, the Complainant argues that it has not licensed, authorized or permitted the Respondent to register the disputed domain name and that the Respondent is not commonly known by the disputed domain name.
In addition to that, the Complainant notes that the Respondent is using the disputed domain name to mislead consumers or to tarnish the trademark owned by the Complainant.
Also, the Complainant argues that the Respondent is not making a bona fide offering of goods, according to Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, because the Respondent would be offering competing products of other commercial origin as well.
The Complainant also argues that the Respondent registered and used the disputed domain name with the intention to attract, for commercial gain, Internet users to the website, creating likelihood of confusion with the Complainant’s trademark registrations.
Finally, the Complainant seeks to have the disputed domain name be transferred to it. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Policy establishes three elements, specified in paragraph 4(a) that must be established by the Complainant to obtain relief. These elements are:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interest in respect of the disputed domain name;
(iii) The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant owns various trademark registrations for the IQOS trademark, in different jurisdictions, therefore holding rights in the IQOS mark.
The disputed domain name is phonetic and visual similar to the Complainant’s trademark registration, with the mere addition of the geographical term “Dubai”.
Also, the mere addition of the gTLD “.com” to the disputed domain name does not constitute an element in the disputed domain name so as to avoid confusing similarity with the Complainant’s trademark for purposes of the Policy. Its use is purely for Internet technical registration purposes. See The Coca-Cola Company v. David Jurkiewicz,WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc., WIPO Case No. D2001-0015; F. Hoffmann La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; and Aktiebolaget Electrolux v. Jose Manuel,WIPO Case No. D2010-2031.
In view of all of the above, the Panel concludes that the disputed domain name is indeed confusingly similar to the Complainant’s registered trademark IQOS.
Therefore, the Panel concludes that the Complainant has established the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The Complainant has not authorized, licensed or permitted the Respondent to use the trademark IQOS and there is no evidence that the Respondent has been or is commonly known by the disputed domain name or is using it in connection with a bona fide offering of goods or services or is making a legitimate noncommercial or fair use.
The Panel finds that the Complainant has established a prima facie case that none of the three circumstances establishing rights or legitimate interests mentioned above applies. As stressed by previous UDRP panels, in such a case, the burden of production then shifts to the respondent to rebut the complainant’s prima facie case.
By not submitting a Response, the Respondent has failed to invoke any circumstance which could have demonstrated any rights or legitimate interests in the disputed domain names under paragraph 4(c) of the Policy.
In addition, the Panel notes the nature of the disputed domain name which carries a risk of implied affiliation, and the content of the website including competing products.
Accordingly, the Panel finds that the Complainant has established paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
For a complaint to succeed, a panel must be satisfied that a domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).
In the present case, the Panel finds that the Respondent has intentionally registered the disputed domain name with the Complainant in mind. The Panel considers that the disputed domain name is confusingly similar to the Complainant’s marks and domain names and could mislead consumers.
Also, the fact that the Respondent offers the Complainant’s goods in the disputed domain name is highly unlikely that the Respondent was not aware of the Complainant’s trademark rights when the disputed domain name was registered.
The Panel notes that the allegations of bad faith made by the Complainant were not contested, as the Respondent did not formally reply to the Complaint.
The Panel agrees that the use of the disputed domain name with the intent to attract Internet users to the website for commercial gain by creating a likelihood of confusion with Complainant’s trademarks shall constitute evidence of registration and use in bad faith (see e.g., Radio Globo SA v. Vanilla Limited,WIPO Case No. D2006-1557).
In view of the above, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith.
Therefore, the Panel finds that the Complainant has established the third element of paragraph 4(a) 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 be transferred to the Complainant.
Luiz E. Montaury Pimenta
Sole Panelist
Date: October 8, 2019
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