The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Mohammad Bhutto, Pakistan. 2. The Domain Names and Registrars
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 7, 2020, regarding the domain names 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 January 22, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 11, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 12, 2020. The Center appointed Pablo A. Palazzi as the sole panelist in this matter on February 28, 2020. 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 February 10, 2020, the Complainant sent an email to the Center requesting the addition of the following domain names: On March 10, 2020, the Center issued the First Panel Order, in which the Panel notes the request for addition of the domain names On March 18, 2020 the Center issued the Second Panel Order, in which the Panel found that there were sufficient grounds to accept the Complainant’s request to include the Additional Domain Names. The Panel invited the Respondent to submit their arguments by March 23, 2020. The Respondent did not submit any arguments in response to the Second Panel Order. 4. Factual Background The Complainant is a company which is part of the group of companies affiliated to 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 51 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 is the owner of the following registrations, among others: - United Arab Emirates IQOS, Registration No. 211139, registered on March 16, 2016 The Respondent registered the following Disputed Domain Names: - The Disputed Domain Names are linked to an online shop at “https://iqos-heets-uae.org/” which allegedly sells and offers the Complainant’s IQOS System, as well as competing third party products of other commercial origin. 5. Parties’ Contentions A. Complainant The Complainant contentions can be summarized as follows: Identical or confusingly similar The Complainant states that the Disputed Domain Names identically adopt the Complainant’s IQOS and HEET trademarks. The addition of the geographical abbreviation for the United Arab Emirates (“UAE”) is insufficient itself to avoid a finding of confusing similarity. Thus, Internet users will reasonably expect to find the websites commercially linked to the Complainant. Rights or legitimate interest The Complainant contends that the Respondent lacks any right or legitimate interest in the Disputed Domain Names. In addition, the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register a domain names with the IQOS and HEETS trademarks. The Complainant further states that the Respondent is not an authorized distributor or reseller of the IQOS system. Moreover, the website is selling competing tobacco products and/or accessories of other commercial origin. Furthermore, the website uses the Complainant’s official product images and marketing materials. 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 the Respondent knew of the Complainant’s trademarks when registering the Disputed Domain Names. The Respondent started offering the Complainant’s IQOS System immediately after registering the Disputed Domain Names. Consequently, the Respondent registered and used the Disputed Domain Names with the intention to attract for commercial gain Internet users to the website by creating a likelihood of confusion with the Complainant’s trademark. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Preliminary Issue: Addition of the Additional Domain Names to the Proceeding The Panel’s decision to accept the addition of the Additional Domain Names, On February 10, 2020, the Complainant requested the addition of the Additional Domain Names to this proceeding. The Panel found that there were sufficient arguments to consider the request. The Panel therefore instructed the Center to transmit to the concerned Registrar (GoDaddy.com, LLC) a request for registrar verification in connection with the Additional Domain Names. On March 12, 2020, the Registrar provided the registrant information details. The registrant name for the Additional Domain Names The Panel is of the view that the Additional Domain Names are subject to common control, since they all redirect to the same website for the Disputed Domain Name The issue of the consolidation of multiple respondents has been considered by various prior UDRP panels who have reached a consensus. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11. Accordingly, the Panel accepts the Complainant’s request to include the Additional Disputed Domain Names Paragraph 4(a) of the Policy lists three elements which the Complainant must satisfy with respect to the Disputed Domain Names at issue in this case: (i) the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and (iii) the Disputed Domain Names have 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 Names Finally, neither the generic Top-Level Domain (“gTLD”) “.com”, “.org” or “.shop” nor the generic term “UAE” are of any significance to the present assessment of confusing similarity. Therefore, the 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 Names: (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 Names or to use the trademarks. The Complainant has (prior) rights in the trademarks which precede the Respondent’s registration of the Disputed Domain Names. The Respondent has failed to show that it has acquired any rights with respect to the Disputed Domain Names or that the Disputed Domain Names are used in connection with a bona fide offering of goods and services. The Respondent had the opportunity to demonstrate his rights or legitimate interests, but he did not reply to the Complainant’s contentions. In addition, the Panel finds that the similarity of the Disputed Domain Names with the Complainant’s IQOS and HEETS trademarks linked with the website at the Disputed Domain Names carries a risk of association or affiliation with the Complainant’s trademark which is not avoided by a short disclaimer displayed at the bottom of the website. 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 Names in bad faith. The Disputed Domain Names were registered in the year 2019, several years after the Complainant registered its trademarks. The fact that the Respondent started offering the Complainant’s products at his website immediately after registering the Disputed Domain Names clearly demonstrates that the Respondent was aware of the Complainant’s products when registering the Disputed Domain Names. Furthermore, the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register the Disputed Domain Names incorporating its trademarks. Neither the Respondent is an authorized reseller of the Complainant’s product. 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 in the United Arab Emirates. Thus, Internet users might have well 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. The Panel notes that the website linked to the Disputed Domain Names 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 sufficiently prominent way. On the contrary, the 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 fact that the Respondent was previously involved in a UDRP proceeding for using the Complainant trademark enhances the Respondent’s bad faith. (See, Philip Morris Products S.A. vs. Registration Private, Domains By Proxy, LLC / Mohammad Bhutto, WIPO Case No. D2019-2243). All the aforementioned circumstances indicate that the Respondent was aware of the Complainant’s trademarks when registering the Disputed Domain Names and has created a likelihood of confusion with the Complainant’s trademarks and website in order to attract Internet users for his own commercial gain. Due to this conduct, it is obvious that the Respondent intentionally created likelihood of confusion with the Complainant’s trademarks and website in order to attract Internet users for his own commercial gain, in line with 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 Names in bad faith. 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 Pablo A. Palazzi
- United Arab Emirates HEETS, Registration No. 256864, registered on December 25, 2017,
- International Registration HEETS (& Design), Registration No. 1328679, registered on July 20, 2016;
and
- International Registration IQOS, Registration No. 1218246, registered on July 10, 2014.
-
-
-
Sole Panelist
Date: April 6, 2020
Full & Egal Universal Law Academy