The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Domains By Proxy, LLC, IQUS HEETS UAE, United States of America / Aramis Martirosyan, Iqus, Pakistan / Rohit Kulkarni, Be On Top, United Arab Emirates. 2. The Domain Names and Registrar
The disputed domain names, The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 27, 2020. On October 27, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On October 28, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 29, 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 November 3, 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 November 4, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 24, 2020. The Respondent did not submit any response, save for the email of November 5, 2020, referred to in section 5B below. Accordingly, the Center informed the parties about the commencement of the Panel appointment on November 30, 2020. The Center appointed Tony Willoughby as the sole panelist in this matter on December 3, 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. As will be seen, the Domain Names are held in the names of different entities. Ordinarily, pursuant to paragraph 3(c) of the Rules, a complaint may only relate to more than one domain name where the disputed domain names are registered in the name of the same domain name holder. The Panel has decided on the balance of probabilities for the reasons set out in section 6A below that it is likely that the Domain Names are under common control and that it is appropriate that they should be dealt with together in this decision. All references in this decision to the “Respondent” are references to the entity having control of the Domain Names. 4. Factual Background The Complainant is a member of the group of companies headed by Philip Morris International Inc., a leading international tobacco company. In addition to its core business of production and sale of combustible cigarettes the Complainant has since 2014 included the production and sale of non-combustible alternatives, which it markets under the trade marks IQOS and HEETS, the slogan “IQOS THIS CHANGES EVERYTHING” and a hummingbird device. The Complainant is the registered proprietor of numerous trade mark registrations covering the trade marks, which it uses in relation to its IQOS HEETS products, including the following registrations, namely: - United Arab Emirates Registration No. 211139 IQOS (word) registered on March 16, 2016, for a wide variety of smoking-related goods in class 34; - United Arab Emirates Registration No. 211143 IQOS (word/device) registered on March 16, 2016, for a wide variety of smoking-related goods in class 34; - United Arab Emirates Registration No. 256864 HEETS (word) registered on December 25, 2017, for a variety of smoking related articles in class 34; - United Arab Emirates Registration No. 256867 HEETS (word/device) registered on December 25, 2017, for a variety of smoking related articles in class 34; - United Arab Emirates Registration No. 270396 IQOS THIS CHANGES EVERYTHING (words) registered on June 27, 2018, for a variety of apparatus in class 11; and - United Arab Emirates Registration No. 211231 hummingbird logo (device) registered on January 18, 2018, for a variety of smoking related articles in class 34. On October 31, 2019, Aramayis Martirosyan of an address in Pakistan registered the Second Domain Name, On October 7, 2020, Rohit Kulkarni of an address in Dubai registered the First Domain Name, Of relevance to the Complainant’s case are two other domain names, which have featured in complaints filed with the Center by the Complainant under the Policy. They are The Complainant contends that the Domain Names were registered by the same person or are under common control and that both the Domain Names should be dealt with in this Complaint. The Complainant contends that the Domain Names are confusingly similar to the Complainant’s HEETS trade mark, that the First Domain Name is also confusingly similar to the Complainant’s IQOS trade mark, that the Respondent has no rights or legitimate interests in respect of the Domain Names and that the Domain Names have been registered and are being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. B. Respondent The Respondent did not reply to the Complainant’s contentions. However, Rohit Kulkarni identified by the Registrar as the registrant of the First Domain Name sent an email to the Center on November 5, 2020, writing: “I am not sure as to what's going on with the domains. I had bought these domains for someone else. Kindly let me know what I can do to help you.” 6. Discussion and Findings A. Preliminary Issue – consolidation Paragraph 3(c) of the Rules provides that “The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder”. Here the Domain Names are held in different names, but the Panel is satisfied from the evidence filed by the Complainant that the underlying registrant of each of the Domain Names is one and the same individual and/or that the Domain Names are under common control. First, both Domain Names resolve to the website connected to the First Domain Name. Secondly, the email to the Center from Rohit Kulkarni (see section 5B above) makes clear that he was responsible for the registration of both Domain Names and on behalf of the same third party. Paragraph 10(e) of the Rules gives to the Panel the power to decide requests to consolidate multiple domain name disputes. The Panel accedes to the Complainant’s request for consolidation. B. General According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that: (i) the Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the Domain Names; and (iii) the Domain Names have been registered and are being used in bad faith. C. Identical or Confusingly Similar The First Domain Name comprises the trade mark HEETS, the word “online”, the geographical indication “Dubai” and the generic “.com” Top-Level Domain identifier. The Second Domain Name comprises the name “iqus”, the trade mark HEETS, the geographical indication “UAE” and the generic “.com” Top Level Domain identifier. Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) explains the test for identity or confusing similarity under the first element of the Policy and includes the following passage: “While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” The Complainant’s HEETS trade mark is readily recognizable in its entirety in both the Domain Names and the name “iqus” in the Second Domain Name is readily recognizable as a misspelling of the Complainant’s IQOS trade mark. The Panel finds that the Domain Names are confusingly similar to trade marks in which the Complainant has rights. D. Rights or Legitimate Interests The Domain Names have no obvious association with the names of the registrants identified by the Registrar in response to the Center’s registrar verification request. The use being made of the Domain Names is plainly a commercial use and is not a use authorized by the Complainant. Accordingly, the only issue is as to whether the use can be said to constitute a use in relation to a bona fide offering of goods or services such as to give rise to rights or legitimate interests as identified in paragraph 4(c)(i) of the Policy. Both Domain Names resolve to the same online store connected to the First Domain Name. The Home page makes prominent use of all the Complainant’s trade marks covered by the United Arab Emirate trade mark registrations detailed in section 4 above. There is nothing on that website to indicate the entity operating the website, save for the copyright notice at the bottom of the home page reading “© 2020 IQUS HEETS UAE”. In the Panel’s view the whole appearance of the website, featuring as it does all the Complainant’s trade marks and a large number of images of the Complainant’s products, is intended to give the impression that it is a website of or authorized by the Complainant. The copyright notice featuring a misspelling of the Complainant’s IQOS trade mark in combination with the Complainant’s HEETS trade mark is clearly intended to give the same impression. In the view of the Panel the overwhelming likelihood is that Internet users dealing through that website will be deceived into believing that they are dealing with the Complainant or an authorized agent of the Complainant. They will be deceived. The Panel does not believe that there is any basis upon which such a use can give rise to relevant rights or legitimate interests in the hands of the Respondent and the Panel notes that the Respondent has not sought to argue the contrary. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names. E. Registered and Used in Bad Faith The Panel’s finding in D above is to the effect that the use being made of the Domain Names is not a bona fide use, but a deceptive use. Internet users are likely to be deceived into believing that when dealing with the Respondent through the website connected to the Domain Names they are dealing with the Complainant or an authorized agent of the Complainant. The Domain Names themselves indicate the Complainant and the appearance and style of the website to which the Domain Names are connected do nothing to repair that false impression. Indeed, the appearance and content of the website only serve to confirm it. Paragraph 4(b)(iv) of the Policy provides that a circumstance leading to a finding of bad faith registration and use under the Policy is where the Respondent has used the disputed domain name intentionally to attract Internet users to the Respondent’s website for commercial gain “by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of [the] website […]”. The Panel finds that the Domain Name has been registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. For completeness the Panel should address another contention of the Complainant. The final paragraph of section 4 above refers to two other cases filed by the Complainant under the Policy. They are Philip Morris Products S.A. v. Contact Privacy Inc. Customer 0156426250 / A M, HEETS IQUS UAE, WIPO Case No. D2020-1089 concerning the domain name For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, Tony Willoughby
Sole Panelist
Date: December 3, 2020
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