The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Babar Husain M, India. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 23, 2020. On October 23, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 23, 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 October 26, 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 October 26, 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 October 28, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 17, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 18, 2020. The Center appointed Peter Burgstaller as the sole panelist in this matter on November 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 leading international tobacco company, with products sold in at least 180 countries. The Complainant developed a line of products, under which it developed the trademark IQOS and HEETS. The product branded as IQOS is a controlled heating device in which the goods identified under the trademark HEETS are inserted. The goods identified with the trademark HEETS are tobacco products that generate a flavor nicotine-containing aerosol (Annex 5 to the Complaint). Both trademarks also identify goods related to the products described above. Among others, the Complainant owns the following trademarks: - United Arab Emirates registration (word) No. 211139 for the trademark IQOS, registered on registered on March 16, 2016, regarding goods of International class 34. - United Arab Emirates registration No. 256867 for the trademark HEETS, registered on registered on December 25, 2017, regarding goods of International class 34 (Annex 6 and 7 to the Complaint). The Complainant 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. The disputed domain name is linked to an online shop purporting to sell the Complainant’s products along with accessories of third parties (Annex 8 to the Complaint). The disputed domain name was registered on August 22, 2020 (Annex 1 to the Complaint). 5. Parties’ Contentions A. Complainant The Complainant is a company, which is part of the group of companies affiliated to Philip Morris International Inc. (PMI). The PMI group is a leading international tobacco company, with products sold in approximately 180 countries; its unequalled brand portfolio contains brands like MARLBORO (outside of the United States of America and Canada), the world’s number one international selling cigarette brand since 1972. The Complainant and the PMI group are known for innovating across its brand portfolio. In the course of transforming its business from combustible cigarettes to “Reduced Risk Products” (RRP) a number of RRP products are developed and sold under the trademark IQOS. These IQOS products are 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 products were first launched in Nagoya, Japan in 2014, and has obtained an extraordinary 18.3 per cent share of the market in Japan. Today the IQOS system is available in key cities in around 57 markets across the world. As a result of a USD 6 billion investment and extensive international sales (in accordance with local laws), the IQOS system has achieved considerable international success and reputation, and over 11 million relevant consumers have converted to the IQOS system worldwide. The IQOS system has been almost exclusively distributed through the Complainant or the PMI group official IQOS stores and websites and selected authorized distributors and retailers. For its new innovative smoke-free products the Complainant owns a large portfolio of well-known trademarks. Among them, but by no means limited to, the following trademark registrations: - United Arab Emirates Registration IQOS (word) No. 211139 registered on March 16, 2016; The Respondent registered the disputed domain name; it identically adopts the Complainant’s IQOS and HEETS trademarks; it only adds generic and geographic terms which are insufficient to avoid a finding of confusing similarity. The Respondent has no rights or legitimate interests in respect of the disputed domain name – the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks. The Respondent has moreover registered and used the disputed domain name in bad faith; it was seeking a misleading association with the Complainant and registered the disputed domain name with the intention to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with Complainant’s trademarks IQOS and HEETS as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location, which constitutes registration and use in bad faith. The Respondent has shown a pattern of bad faith conduct by registering domain names, which incorporate the Complainant’s trademarks. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to paragraph 4(a) of the Policy, the Complainant must prove that The Complainant submitted evidence, which incontestably and conclusively establishes rights in the trademarks IQOS and HEETS. Since the disputed domain name incorporates both trademarks (IQOS and HEETS) identically, supplemented only by a geographical abbreviation for United Arab Emirates “uae”, the Panel finds that the disputed domain name is confusingly similar to the Complainants registered marks IQOS and HEETS. It has long been established under UDRP decisions that where the relevant trademark is recognizable within the disputed domain name the mere addition of other terms whether descriptive, geographical, pejorative, meaningless, or otherwise will not prevent a finding of confusing similarity under the first element of the Policy (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). Finally, it has also long been held that suffixes such as a generic Top-Level Domain (“gTLD”) are generally disregarded. The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests While the overall burden of proof in UDRP proceedings is on the complainant, previous UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (see section 2.1 of the WIPO Overview 3.0). In the present case, the Respondent failed to submit a Response. Considering all of the evidence in the Complaint (especially with regard to the Annexes presented by the Complainant) and the Complainant’s contentions that the Respondent has no rights or legitimate interests in the disputed domain names, that the Respondent has no connection or affiliation with the Complainant, and the Respondent has not received any license or consent, express or implied, to use the Complainant’s trademarks IQOS and HEETS in a domain name or in any other manner, lead the Panel to the conclusion that the Complainant has made out an undisputed prima facie case so that the conditions set out in paragraph 4(a)(ii) of the Policy have been met by the Complainant. The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith As stated in many decisions rendered under the Policy (e.g. Robert Ellenbogen v. Mike Pearson,WIPO Case No. D2000-0001) both conditions, registration and use in bad faith, must be demonstrated; consequently, the Complainants must show that: - the disputed domain name was registered by the Respondent in bad faith, and The Complainant is the owner of the distinctive registered trademark IQQS and the registered trademark HEETS. The fact, that these two separate trademarks from the same trademark owner (Complainant) were included identically in the disputed domain name, is no coincidence for the Panel – on the contrary: it is inconceivable that the Respondent has registered the disputed domain name without knowledge of the Complainant’s rights in the trademarks IQOS and HEETS. Therefore, the Panel is convinced that the disputed domain name was registered in bad faith by the Respondent. The Respondent moreover actively used the disputed domain name; it linked the disputed domain name to an online shop purporting to sell the Complainant’s products along with accessories of third parties. This active use of the disputed domain name by the Respondent leads this Panel to the conclusion of bad faith use, and the Panel notes that the Respondent has failed to present any evidence of any (contemplated) good faith use in this respect so that there is no plausible reason for a bona fide future usage with regard to the disputed domain name by the Respondent. The Panel is convinced that the Respondent registered the disputed domain name to disrupt Complainant’s business and to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement. The fact of the inclusion of a disclaimer within Respondent’s resolving website does not demonstrate good faith in the present case, it rather shows that the Respondent is aware that an Internet user may be confused by the composition of the disputed domain name (see section 3.7 of the WIPO Overview 3.0). On the basis of these facts and findings, it is for the Panel incontestable that the disputed domain name was registered and is being used in bad faith according to paragraph 4(a)(iii) 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 Peter Burgstaller
- United Arab Emirates Registration HEETS (word) No. 256864 registered on December 25, 2017; and
- United Arab Emirates Registration HEETS (word/device) No. 256867 registered on December 25, 2017.
(i) the disputed domain name is 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 with respect to the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
- the disputed domain name is being used by the Respondent in bad faith.
Sole Panelist
Date: December 8, 2020
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