The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America / Mohammad Bhutto, Pakistan. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 16, 2019. On September 16, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 17, 2019, the Registrar transmitted by email to the Center its verification response 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 September 20, 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 amended Complaint on September 23, 2019. 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 September 27, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 17, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default October 18, 2019. The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on October 25, 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 part of the Philip Morris International Inc. (hereinafter referred to as “PMI”), an international tobacco conglomerate that sells tobacco products in around 180 countries of the world. One of its products is the IQOS system, a precisely controlled heating device into which specially designed tobacco products under the trademarks HEETS or HEATSTICKS are inserted and heated to generate flavorful nicotine-containing aerosol. Such products are being marketed in key cities in around 48 markets across the world through official IQOS stores and websites and selected authorized distributors and retailers. The Complainant owns among others the following trademarks: - United Arab Emirates registration No. 256864 for the word mark HEETS, registered on December 25, 2017 in class 34; - International registration No. 1328679 for the device mark HEETS, registered on July 20, 2016, in classes 9, 11 and 34; - International registration No. 1218246 for the word mark IQOS, registered on July 10, 2014 in classes 9, 11 and 34; and - International registration No. 1461017 for the device mark IQOS, registered on January 18, 2019 in classes 9 and 34. The disputed domain names were registered on September 3, 2019 and all to the same online shop allegedly offering the Complainant’s IQOS system for sale in the territory of the United Arab Emirates, displaying the Complainant’s IQOS and HEETS products as well as competing products of third parties. 5. Parties’ Contentions A. Complainant The Complainant claims to have, developed the IQOS system, first launched in Nagoya, Japan in 2014. Asserting to have invested USD 6 billion in extensive international sales and marketing efforts to promote its IQOS system, the Complainant states that its new product has obtained considerable international success and reputation, approximately having 7.3 million relevant consumers. According to the Complainant, the disputed domain names were registered through a privacy registration service provider, so as to conceal the identity of the real owner and operator of the disputed domain names. After the unveiling of the details and confirmation to the Center the Complainant asserted that the Respondent is not known or in any way related to any company belonging to PMI and is not authorized to use the IQOS and HEETS trademarks. Also according to the Complainant, the use of the disputed domain names in connection with an online shop allegedly offering the Complainant’s products as well as competing third party products, targeting the United Arab Emirates market, clearly characterizes an attempt to pass off as an official online retailer of the Complainant’s products in the territory of the United Arab Emirates. Furthermore, the unauthorized reproduction of the Complainant’s official product images and marketing materials, without the Complainant’s authorization, strengthens the false impression to Internet users that the Respondent is connected with or one of the Complainant’s official distributors. In addition to that, the Complainant argues that an unremarkable disclaimer is placed at the bottom of the website stating that “IQOS HEETS DUBAI HAVE NO AFFILIATION WITH PHILIP MORRIS INTERNATIONAL (PMI). THIS IS NOT OFFICIAL WEBSITE OF PMI AND IQOS.” (Annex 8 to the Complaint). Such disclaimer, under the Complainant’s view will likely only be encountered by Internet users after a commercial decision to purchase the products offered for sale on the website is made. Notwithstanding the disclaimer, the Complainant notes that the “Terms of Use” page provided under the website states that “Each and every content, picture, video, graphic, etc, present on the website also stated as the ‘Content of the website’ are the copyrights, possess trademark, controlled, are the property and accredited by IQOSHeetsDubai.com”, which consists of a false statement, clearly contradictory to the purported disclaimer. Under the Complainant’s view the disputed domain names all incorporate the Complainant’s IQOS and HEETS trademarks and are thus confusingly similar therewith, being the addition of the geographic term Dubai insufficient to avoid a finding of confusing similarity under the Policy. The Complainant further contends that the unlawful association with the Complainant’s trademarks is exacerbated by the use of the Complainant’s official product images and marketing materials without the Complainant’s authorization. Regarding the absence of the Respondent’s rights or legitimate interests, the Complainant argues that: i. it 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; ii. the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names, rather showing 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; iii. the Respondent is not an authorized reseller of the Complainant’s IQOS system; iv. the criteria for a bona fide offering of goods or services as established in Oki Data Americas, Inc. v. ASD, Inc, WIPO Case No. D2001-0903 are not met, given that the Respondent is selling products other than the Complainant’s goods; v. the disputed domain names and the content of the website to which they resolve suggest at least an affiliation with the Complainant which in fact does not exist; vi. the website uses the Complainant’s official product images and marketing materials without authorization, making an illegitimate and false claim of rights in the Complainant’s official copyright protected material, further supporting the false impression of endorsement of the disputed domain names with the Complainant; vii. the website to which the disputed domain names resolve include no information regarding the identity of the provider of the website which further served to perpetuate the false impression of a commercial relationship between the disputed domain names and the Complainant; and viii. the disclaimer included at the bottom of the Respondent’s website is inaccurate and does not correctly identifies the owner of the IQOS and HEETS trademarks and its relationship (or lack thereof) to the Respondent, also not being capable of offsetting the risk of initial interest confusion. As to the registration and use of the disputed domain names the Complainant states that: i. the Respondent knew of the Complainant’s trademarks when registering the disputed domain names; ii. the marks IQOS and HEETS are not commonly used to refer to tobacco products and therefore it is beyond the realm of reasonable coincidence that the Respondent chose the disputed domain names without intention of invoking a misleading association with the Complainant; iii. the purpose of the Respondent’s registration of the disputed domain names was to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s registered IQOS and HEETS trademarks as to the source, sponsorship, affiliation, or endorsement of its website; iv. by reproducing the Complainant’s registered trademarks in the disputed domain names and in the title of the website, the Respondent’s website suggests the Complainant or an affiliated dealer of the Complainant as the source of the website which is not the case; being this suggestion also supported by the Respondent’s use of the Complainant’s official product images and marketing materials; v. the Respondent is not only using the Complainant’s IQOS and HEETS trademarks for the purpose of offering for sale the IQOS system but also for purposes of offering for sale competing products of other commercial origin, characterizing a clear-cut trademark infringement and constituting clear evidence of the Respondent’s bad faith; and vi. the choice to retain a privacy protection service so as to hide the Respondent’s true identity is a further indicative of bad faith as recognized in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.6. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant has established rights over the IQOS and HEETS trademarks. The disputed domain names incorporates the Complainant’s trademarks with the addition of the geographic term “Dubai” what does not prevent the disputed domain names from being confusingly similar to the IQOS and HEETS trademarks. See WIPO Overview 3.0, section 1.8. For the reasons above, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademarks. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a nonexclusive list of circumstances that may indicate the Respondent’s rights or legitimate interests in the disputed domain names. These circumstances are: (i.) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or (ii.) the Respondent (as individuals, businesses, or other organizations) has been commonly known by the disputed domain names, in spite of not having acquired trademark or service mark rights; or (iii.) the Respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain names. This entitles the Panel to draw any inferences from such default as it considers appropriate, pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make at least a prima facie case against the Respondent under the second UDRP element. In that sense, and according to the evidence submitted, the Complainant has made a prime facie case against the Respondent which has not been commonly known by the disputed domain names and is neither an authorized reseller of the Complainant’s IQOS system nor has it been licensed or otherwise permitted to use any of the Complainant’s trademarks or to register a domain name incorporating its IQOS or HEETS trademarks. Also according to the evidence submitted by the Complainant, the use made of the disputed domain names in connection with an online shop allegedly offering the Complainant’s products, reproducing the Complainant’s IQOS and HEETS logos in a prominent manner, together with the unauthorized reproduction of the Complainant’s official marketing materials and product images, clearly suggest at least an affiliation with the Complainant which in fact does not exist. Selling other parties competing products at the online shop that resolves from the disputed domain names does not meet the criteria for a bona fide offering of goods or services as established in Oki Data Americas, Inc. v. ASD, Inc, supra. Lastly, the disclaimer on the website is not clear as to the identity of the responsible for the online shop, not properly indicating who is the owner of the IQOS and HEETS trademarks. Further, the presence of the disclaimer is not clear and sufficiently prominent on the website. Moreover, the Panel finds that the nature of the disputed domain names carries a risk of implied affiliation with the Complainant. Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain names. C. Registered and Used in Bad Faith The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in respect of a disputed domain name, where a respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. In this case, both the registration and use of the disputed domain names in bad faith can be found pursuant to Policy, paragraph 4(b)(iv) in view of the reproduction of the IQOS and HEETS trademarks, as well as the online shop that is available at the webpage relating to the disputed domain names, together with the unauthorized reproduction of the Complainant’s official marketing materials and product images, which create a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement thereof. Moreover, as discussed under section 6.B above, the Panel considers that the Respondent’s use of a disclaimer in this case as an admission by the Respondent that Internet users may be confused. See WIPO Overview 3.0, section 3.7. For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain names. 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 Wilson Pinheiro Jabur
Sole Panelist
Date: November 4, 2019
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