The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Hasrat Shaikh, 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 March 1, 2021. On March 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 2, 2021, 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 March 23, 2021 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 March 24, 2021. 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 March 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 18, 2021. The Respondent sent the Center two communications. The first was received on March 24, 2021, and the second was received on March 26, 2021, in which the Respondent indicated that the disputed domain name had been removed. In this regard, on April 5, 2021, the Center invited the Complainant to comment whether it would like to suspend the proceeding for possible settlement. In the absence of the Complainant’s suspension request, the Center informed the Parties that it would proceed with panel appointment on April 27, 2021. The Center appointed Kaya Köklü as the sole panelist in this matter on May 7, 2021. 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. group, which is a group of companies active in the field of tobacco and smoke-free products. The Complainant owns various word and figurative IQOS and HEETS trademark registrations around the world, including various registrations in the United Arab Emirates, whose emirate Dubai is indicated in the dispute domain name. According to the provided documents in the case file, the Complainant is, among other, the registered owner of the United Arab Emirates Registrations No. 211139 for IQOS (registered on March 16, 2016) and No. 256864 for HEETS (registered on December 25, 2017), each of them for products covered in class 34 (Annex 6 to the Complaint). The Complainant also owns and operates various domain names, which incorporate the IQOS trademark, such as The Respondent appears to be an individual from India. The disputed domain name was registered on February 13, 2021. The screenshots, as provided by the Complainant, show that the disputed domain name resolved to a website in the English language, which was used for offering various kinds of IQOS and HEETS smoke-free products and further competing third-party products (Annex 8 to the Complaint). On the website at the disputed domain name, the Respondent prominently used the IQOS and HEETS word trademarks as well as various original product images of the Complainant. At the time of the decision, the disputed domain name is no longer actively used and resolves to a Shopify parking page. 5. Parties’ Contentions A. Complainant The Complainant requests the transfer of the disputed domain name. The Complainant is of the opinion that the disputed domain name is confusingly similar to its IQOS and HEETS trademarks. Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It is rather argued that the disputed domain name falsely suggests that there is some official or authorized link between the Complainant and the Respondent. Finally, it is argued that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant particularly argues that the Respondent must have been well aware of the Complainant’s IQOS and HEETS trademarks, when registering the disputed domain name, particularly as the Respondent uses the Complainant’s IQOS and HEETS trademarks on the website linked to the disputed domain name and its product images without authorization and disclosure of the missing relationship between the Complainant and the Respondent. B. Respondent The Respondent did not formally reply to the Complainant’s contentions. In his short email communications of March 24 and 26, 2021, the Respondent first asked for information related to “the procedure and the required documents”, and then merely indicated that he “already removed domain from everywhere”. 6. Discussion and Findings According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights; and Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complainant’s contentions. Stanworth Development Limited v. E Net Marketing Ltd.,WIPO Case No. D2007-1228. However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). It is further noted that the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistent with the consensus views captured therein. A. Identical or Confusingly Similar The Panel finds that the Complainant has registered trademark rights in the marks IQOS and HEETS by virtue of various trademark registrations, including trademark registrations covering protection in United Arab Emirates. The Panel further finds that the disputed domain name is confusingly similar to the Complainant’s registered IQOS and HEETS trademarks, as it fully incorporates both of them. As stated at section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms would not prevent a finding of confusing similarity. The mere addition of the emirate’s name “Dubai” does, in view of the Panel, not serve to avoid a finding of confusing similarity between the disputed domain name and the Complainant’s IQOS and HEETS trademarks. Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Panel further finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name. While the burden of proof on this element remains with the complainant, previous UDRP panels have recognized that this would result in the often impossible task of proving a negative, in particular as the evidence in this regard is often primarily within the knowledge of the respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of production shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements of paragraph 4(a)(ii) of the Policy. See, Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455. The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to file any evidence or make any convincing argument to demonstrate rights or legitimate interests in the disputed domain name according to the Policy, paragraphs 4(a)(ii) and 4(c). In its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has no rights or legitimate interests to use the Complainant’s IQOS and HEETS trademarks in a confusingly similar way within the disputed domain name. There is also no indication in the current record that the Respondent is commonly known by the disputed domain name. In the absence of a substantial response, the Respondent has particularly failed to demonstrate any of the other non-exclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or other evidence of rights or legitimate interests in the disputed domain name. In this regard, the Panel particularly believes that the Respondent cannot be assessed as a legitimate dealer for the Complainant’s products in light of Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 (“Oki Data”) and thus is not entitled to use the disputed domain name accordingly. The criteria as set forth in Oki Data are apparently not fulfilled in the present case. The Panel particularly notes that the Respondent offered not only products of the Complainant but also competing third party products of other commercial origin. Additionally, the website which was linked to the disputed domain name did not accurately and prominently disclose the relationship, or rather the lack thereof, between the Respondent and the Complainant, thus creating the false impression that the Respondent might be an official and authorized reseller/distributor for the Complainant’s products in Dubai. This assessment is particularly supported by the nature of the disputed domain name, which in view of the Panel carries a risk of implied affiliation or association, as stated in section 2.5.1 of the WIPO Overview 3.0. In view of the Panel, all this takes the Respondent out of the Oki Data safe harbour for purposes of the second element. As a conclusion, the Panel finds that the Complainant has also satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith In the Panel’s view, the Respondent has registered and is using the disputed domain name in bad faith. The Panel is convinced that the Respondent must have had the Complainant’s trademarks in mind when registering the disputed domain name. It even appears that the Respondent has registered the disputed domain name solely for the purpose of creating an association with the Complainant and its smoke-free products. After having reviewed the Complainant’s screenshots of the website linked to the disputed domain name, the Panel is convinced that the Respondent intentionally registered the disputed domain name in order to generate traffic to its own website. The prominent use of the IQOS and HEETS trademarks, the overall design of the website which was linked to the disputed domain name, the use of product images of the Complainant, sales of third party products and the nature of the disputed domain name is, in view of the Panel, sufficient evidence that the Respondent intentionally tries to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant and its IQOS and HEETS trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. The fact that the disputed domain name does currently resolve to a Shopify parking page does not change the Panel’s findings in this respect. Taking all facts of the case into consideration, the Panel believes that this is a typical cybersquatting case, which the UDRP was designed to stop. The Panel therefore concludes that the disputed domain name was registered and is being used in bad faith and that the Complainant has also satisfied the third element of the Policy, namely, 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 Kaya Köklü
(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: May 20, 2021
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