The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Contact Privacy Inc. Customer 0156426250, Canada / A M, HEETS IQUS UAE, United Arab Emirates. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 4, 2020. On May 4, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 5, 2020, 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 May 7, 2020, 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 May 8, 2020. 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 May 11, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 31, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 2, 2020. The Center appointed Daniel Peña as the sole panelist in this matter on June 24, 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. 4. Factual Background The Complainant is a company which is part of the group of companies affiliated to Philip Morris International Inc (jointly referred to as “PMI”). PMI is a leading international tobacco company, with products sold in approximately 180 countries. The Complainant owns for its new innovative smoke-free products a large portfolio of trademarks. Among them, but by no means limited to, are the following trademark registrations: - United Arab Emirates Registration IQOS (word) No. 211139 registered on March 16, 2016; The disputed domain name was registered on December 9, 2019, and is linked to an online shop at “www.iqusheetsuae.com” (the “Website”) selling and offering the Complainant’s IQOS System. The Respondent is also using the disputed domain name including the IQOS and HEETS trademarks and the IQOS logo, hummingbird and THIS CHANGES EVERYTHING trademarks as well as number of the Complainant’s official product images without the Complainant’s authorization on the Website, and offering third party competing accessories and other products on the Website. . 5. Parties’ Contentions A. Complainant The Complainant submits it is known for innovating across its brand portfolio. In the course of transforming its business from combustible cigarettes to Reduced Risk Products (or “RRPs”), PMI has developed a number of RRP products. One of these RRPs developed and sold by PMI is called “Iqos”. Iqos is a precisely controlled heating device into which specially designed tobacco products under the brand names “Heets” or “HeatSticks” are inserted and heated to generate a flavourful nicotine-containing aerosol. The Iqos system also consists of an Iqos Pocket Charger, specially designed to charge the Iqos Holder (collectively referred to as the “Iqos system”). The Iqos system was first launched by PMI in Nagoya, Japan in 2014 and has obtained a 18.3% share of the market in Japan. Today the Iqos system is available in key cities in around 52 markets across the world. The Complainant submits that as a result of a USD 6 billion investment and extensive international sales and marketing efforts (in accordance with local laws), the Iqos system has achieved considerable international success and reputation, and over 9.5 million relevant consumers have converted to the Iqos system worldwide. To date, the Iqos system has been almost exclusively distributed through PMI’s official IQOS stores and websites and selected authorized distributors and retailers. The Respondent is not known or in any way related to the Complainant or any PMI affiliate and is not authorized to use the IQOS and HEETS trademarks (or any trade marks confusingly similar thereto). The disputed domain name is linked to the Website allegedly selling and offering the Complainant’s Iqos system, as well as competing third party products of other commercial origin. The Website is provided in English. The fact that the Website is indicating all prices in United Arab Emirates dirham (AED) currency, as well as presenting the designation “DELIVERY ALL OVER UAE.”, clearly indicates that the Website is directed to the United Arab Emirates. The Complainant submits that the Website is clearly purporting to be an official online retailer of the Complainant’s Iqos system in the United Arab Emirates by using the Complainant’s HEETS trademark and a mark highly similar / phonetically almost identical to the Complainant’s registered IQOS trademark together with geographical abbreviation for the United Arab Emirates, i.e., “uae”. The Website is prominently using the Complainant’s registered IQOS logo, hummingbird and THIS CHANGES EVERYTHING trademarks at the top of the Website, being a location where users / relevant consumers usually expect to find the name of the online shop and/or the name of the provider of the Website. The Website is further using a number of the Complainant’s official product images without the Complainant’s authorization, while at the same time providing a copyright notice at the bottom of the Website claiming copyright in the material presented on the Website and thereby strengthening the false impression of an affiliation with the Complainant. The online shop does not show any details regarding the provider of the Website, leaving the user under the impression that the online shop provided under the disputed domain name is the Complainant or one of its official distributors, which it is not. In an unremarkable disclaimer positioned at the bottom of the Website, after the offers for visitors to the Website to make purchases from the Website, the following appears: The Complainant submits that the relevant information, namely that the trademarks appearing on the Website belong to their respective owners, is ambiguous and inaccurate, and makes no mention of the IQOS or HEETS trademarks, nor who owns these trademarks or the relationship (or lack thereof) between the provider of the Website and the IQOS and HEETS trademarks. The Complainant argues that the disclaimer purposefully omits the most crucial information having regard to the fact that it is the Complainant’s HEETS trademark. In addition, the purported disclaimer is hidden on the Website, and will likely (if at all) only be encountered by visitors to the Website after a commercial decision to purchase the products offered for sale on the Website has been made, on the basis of the false affiliation with the Complainant. The provider of the Website is using the Complainant’s HEETS trademark and a mark highly similar / phonetically almost identical to the Complainant’s registered IQOS trademark in its name in circumstances where the provider of the Website is not known to the Complainant, nor is it authorized to use the Complainant’s IQOS and HEETS trademarks. B. Respondent The Respondent 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 name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; Considering these requirements, the Panel rules as follows: A. Identical or Confusingly Similar The Panel holds that the disputed domain name is confusingly similar to the Complainant’s trademarks for IQOS and HEETS. The Respondent’s incorporation of the Complainant’s trademarks in full in the disputed domain name is evidence that the disputed domain name is confusingly similar to the Complainant’s marks. Mere changing of the letter “o” with the letter “u” and the addition of the geographical term “uae” in the disputed domain name Further, the addition of the generic Top-Level Domain “.com” to the disputed domain name does not prevent a finding of confusing similarity for purposes of the Policy. The Panel is satisfied that the disputed domain name is identical or confusingly similar to the Complainant’s mark and the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant bears the burden of proof in establishing this requirement. In view of the difficulties inherent in proving a negative and because the relevant information is mainly in the possession of the Respondent, it is enough for the Complainant to establish a prima facie case which, if not rebutted by relevant evidence from the Respondent will lead to this ground being set forth. Refraining from submitting a Response, the Respondent has brought to the Panel’s attention no circumstances from which the Panel could infer that the Respondent has rights or legitimate interests in the disputed domain name. The Panel will now examine the Complainant’s arguments regarding the absence of rights or legitimate interests of the Respondent in connection with the disputed domain name. The Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the Complainant’s trademarks in a domain name or in any other manner. The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b). Furthermore, the unrebutted claim of the Complainant that the disputed domain name is being used for deliberately attracting Internet users in the United Arab Emirates to the Website in the mistaken belief that it was the website of the Complainant, or otherwise linked to or authorized by the Complainant supports a finding that the Respondent lacks rights or legitimate interests in the disputed domain name. The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a disputed domain name in bad faith: (i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; (ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location. In the Panel’s view, a finding of bad faith may be made where the Respondent “knew or should have known” of the registration and/or use of the trademark prior to registering the disputed domain name. In this case, the widespread commercial recognition of the trademark IQOS is such that the Respondent must have had knowledge of the trademark before registering the disputed domain name. The Respondent appears to have chosen the disputed domain name in order to deliberately attract Internet users to the Website misleading them to believe that it is the website of the Complainant, or otherwise linked to or authorized by the Complainant. That impression is only reinforced by the content of the Respondent’s Website whereby the Complainant’s marks and content are included. In this Panel’s view, use in bad faith is suggested also by the inclusion of the copyright notice at the bottom of the Website, together with the effective distribution and selling of the Complainant’s devices and products through the Website to which the disputed domain name is directed, and the absence of a disclaimer disclosing the relationship between the Parties (or lack thereof). As such, the Panel is satisfied that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of the products on its website. Under paragraph 4(b)(iv) of the Policy, this circumstance shall be evidence of the registration and use of a domain name in bad faith. Further, the registration and use of a domain name in bad faith is configured and reinforced with the inclusion of the disclaimer at the bottom of the Website “All product names, logos, brands, trademarks and registered trademarks are the property of their respective owners.”, and the omission of crucial information such as the Complainant’s ownership over the HEETS trademark. Thus, the Panel concludes that the disputed domain name was registered and is being used 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 name Daniel Peña
- United Arab Emirates Registration HEETS (word) No. 256864 registered on December 25, 2017;
- United Arab Emirates Registration HEETS (word/device) No. 256867 registered on December 25, 2017;
- United Arab Emirates Registration IQOS THIS CHANGES EVERYTHING (word) Nos. 270393 and 270396 registered on June 27, 2018; and
- United Arab Emirates Registration for Hummingbird Logo (device) No. 261231 registered on January 18, 2018.
“All product names, logos, brands, trademarks and registered trademarks are the property of their respective owners.”
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Sole Panelist
Date: July 8, 2020
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