The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondents are Heets DubaiStore, Bangladesh (the “Respondent DubaiStore”), and Mahmood Tariq, Pakistan (the “Respondent Tariq”). 2. The Domain Names and Registrars
The disputed domain names The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 23, 2021. On March 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 24, 2021, the Registrars transmitted by email to the Center their verification responses disclosing registrant and contact information for the disputed domain names which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainant on April 16, 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 April 19, 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 Respondents of the Complaint, and the proceedings commenced on April 22, 2021. In accordance with the Rules, paragraph 5, the due date for filing a Response was May 12, 2021. On May 19, 2021, the Center granted the Respondents a ten-day period in which to indicate whether they wished to participate in this proceeding. The new due date for filing a Response was May 29, 2021. On May 26, 2021, the Center received an email communication from the Respondents. On June 1, 2021, the Center notified the commencement of Panel appointment process to the Parties. The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on June 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. 3.1. Preliminary Issue: Consolidation. Consolidation of multiple Respondents, and multiple domain names may be appropriate, under paragraphs 3(c) and 10(e) of the Rules, even when differently named domain name Registrants are involved, where the particular circumstances of a given case indicate that common control is being exercised over the disputed domain names. In accordance with the information provided by the relevant Registrars, the Registrants of the disputed domain names are as follows: - The Complainant has requested to consolidate multiple domain names owned by two different Registrants in the same proceeding, alleging that the three disputed domain names appear to be subject to common control. In particular, the Complainant argued the following: i) the three disputed domain names are substantially similar. Taking the above into account, and pursuant to paragraph 10(e) of the Rules, considering that the Complainant has proven that the disputed domains are subject to common control, this Panel decides to consolidate the three disputed domain names in this proceeding, in order to maintain the spirit of the Policy, which is to make available to the parties a simple, cost-effective, and expeditious procedure (see section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); see also BMW v. Mike Lee et al.,WIPO Case No. D2016-2268). 4. Factual Background The Complainant is Philip Morris Products S.A., a Swiss subsidiary of Philip Morris International, Inc., that participates in the tobacco industry. The Complainant is the owner of several trademark registrations, among others, the following: Trademark No. Registration Jurisdiction Date of Registration IQOS 211139 United Arab Emirates March 16, 2016 IQOS 257763 United Arab Emirates April 22, 2018 IQOS 305079 United Arab Emirates June 27, 2019 HEETS 256864 United Arab Emirates December 25, 2017 HEETS 256867 United Arab Emirates December 25, 2017 The Respondents registered the disputed domain names, The Complainant argued the following: That the Complainant is Philip Morris Products S.A., a Swiss company, which is a subsidiary of Philip Morris International, Inc., a leading international tobacco company, with products sold in over 180 countries. That the Complainant is transforming its business from combustible cigarettes to Reduced Risk Products, one of which is called IQOS, an electronic heating device that uses tobacco sticks called HEETS. That the products that bear the trademarks IQOS and HEETS are available in around 64 markets across the world. That after an investment of over USD 6 billion, the IQOS products have achieved considerable international success and reputation, with almost 17.6 million consumers worldwide. That it owns several trademark registrations for IQOS and HEETS in several jurisdictions. I. Identical or Confusingly Similar That the disputed domain names include entirely the Complainant’s trademarks IQOS and HEETS, plus the geographical indications “Dubai”, and “Emirates”, and the descriptive word “store”. That the addition of merely descriptive, and geographical terms to a domain name, is insufficient to avoid a finding of confusing similarity. That the disputed domain name That the addition of the generic Top-Level-Domain (“gTLD”) “.com” to the disputed domain names constitutes a standard registration requirement, and thus it should be disregarded in the confusing similarity test. That any Internet user, when coming across the disputed domain names, will reasonably expect to find the websites commercially linked to the Complainant and be subject to confusion; that this unlawful association is exacerbated by the use of the Complainant’s official product images without authorization. II. Rights or Legitimate Interests That the Respondents have concealed their identities, and that therefore they are not commonly known by the disputed domain names, nor are they in any way related to or affiliated with the Complainant. That it has not authorized the Respondents to use the IQOS and HEETS trademarks. That the Respondents are not making a legitimate, noncommercial, or fair use of the disputed domain names; that, on the contrary, the Respondents are trying to obtain an unfair commercial gain by misleadingly diverting consumers. That the Respondents are using the official product images of the Complainant without its authorization, while displaying a copyright notice associated thereto, thus strengthening the false impression of an affiliation with the Complainant. That the disputed domain names host websites that allegedly sell the Complainant’s products that bear the trademarks IQOS and HEETS, as well as competing products of other commercial origin, and products that infringe the mentioned trademarks. That the Respondents do not satisfy the Oki Data test regarding a bona fide offering of goods or services by a reseller. That the legitimate products that bear the IQOS and HEETS trademarks are sold primarily through official or endorsed stores, and that, in this case, the consumers are misled into believing that the web sites to which the disputed domain names resolve are related to official or endorsed distributors of the Complainant. III. Registered and Used in Bad Faith That it is evident from the use of the disputed domain names that the Respondents knew of the Complainant’s trademarks when registering said domain names. That the trademarks HEETS and IQOS correspond to purely imaginative terms and unique to the Complainant; that they are not commonly used to refer to tobacco products or electronic devices; and that it is no coincidence that the Respondents chose the disputed domain names with the intention of creating a misleading association with the Complainant. That it is evident that the Respondents registered and used the disputed domain names with an intention to attract, for commercial gain, Internet users to their web sites, by creating a likelihood of confusion with the Complainant’s trademarks, as to their source, affiliation, or endorsement. That the fact that the Respondents conceal their identities using a privacy protection service may in itself constitute a factor indicating bad faith. B. Respondents On May 26, 2021, the Respondent Tariq sent an email to the Center, where he stated that he was a web developer, dedicated to registering and creating web sites for his clients. The Panel notes that this communication does not reply to the Complainant’s contentions. He alleged that the disputed domain names Irrespective of the possible existence of a beneficial holder, the Panel notes that Respondent Tariq has been confirmed by the corresponding Registrar as the registrant for the disputed domain names In accordance with paragraph 4(a) of the Policy, the Complainant is required to prove that each of the three following elements is satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant has proven to be the owner of registrations for the trademarks IQOS and HEETS throughout the world, including the United Arab Emirates, where the websites to which the disputed domain names resolve make available their content and the products offered therein. A.1. The disputed domain name The incorporation of the dictionary term “store” and the geographical term “Dubai” does not prevent a finding of confusing similarity, being the relevant trademark recognizable (see section 1.8 of the WIPO Overview 3.0) see also Playboy Enterprises International, Inc. v. Zeynel Demirtas,WIPO Case No. D2007-0768; InfoSpace.com, Inc. v. Hari Prakash,WIPO Case No. D2000-0076; AT&T Corp. v. WorldclassMedia.com,WIPO Case No. D2000-0553; and Six Continents Hotels, Inc., Inter-Continental Hotels Corporation v. South East Asia Tours,WIPO Case No. D2004-0388). A.2. The disputed domain name The disputed domain name Moreover, the addition of the generic Top-Level-Domain (“gTLD”) “.com” to the disputed domain names constitutes a technical requirement of the Domain Name System (“DNS”), and therefore has no legal significance in the present case (see CARACOLITO S SAS v. Nelson Brown, OXM.CO,WIPO Case No. D2020-0268; SAP SE v. Mohammed Aziz Sheikh, Sapteq Global Consulting Services,WIPO Case No. D2015-0565; and Bentley Motors Limited v. Domain Admin / Kyle Rocheleau, Privacy Hero Inc.,WIPO Case No. D2014-1919). In light of the above, the first element of the Policy has been met. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets forth the following examples as circumstances where a respondent may have rights or legitimate interests in the disputed domain name: (i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if it did no acquire trademark or service mark rights; or (iii) the respondent is 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 mark at issue. The Complainant has asserted that there is no relationship or affiliation between the Complainant and the Respondents, that it has not granted any license, permission, authorization, or other rights to the Respondents to use its trademarks IQOS and HEETS, and that the Respondents have not been commonly known by the disputed domain names (see Beyoncé Knowles v. Sonny Ahuja,WIPO Case No. D2010-1431; and Six Continents Hotels, Inc. v. IQ Management Corporation,WIPO Case No. D2004-0272). The Respondents did not contest these allegations. As asserted by the Complainant, the products bearing the IQOS and HEETS trademarks are sold primarily through official or endorsed stores; noting the composition of the disputed domain names and their use, the disputed domain names are misleading the consumers into believing that the websites to which the disputed domain names resolve are related to official or endorsed distributors or resellers, which cannot be deemed as a bona fide offering of goods. The facts of this case do not pass the Oki Data test. The Respondents are using the website to which the disputed domain name The web sites to which the disputed domain names resolve predominantly display the Complainant’s HEETS and IQOS trademarks including their logos, and the images of the Complainant’s official products. Moreover, said sites display copyright notices claiming rights to the Complainant’s official products. This shows that the Respondents have attempted to impersonate the Complainant. In addition, the Panel notes that the composition of the disputed domain names (with added terms such as “Dubai”, “store” and “Emirates”) carry a risk of implied affiliation since Internet users may think that the website to which this disputed domain names resolve belong to an official or endorsed distributor or dealer of the Complainant in said territories (see sections 2.5.1, and 2.13.1 of the WIPO Overview 3.0; see also Self-Portrait IP Limited v. Franklin Kelly, supra). In sum, the Complainant made a prima facie case asserting that the Respondents lack rights to or legitimate interests in the disputed domain names. The Respondents did not submit any evidence or arguments to challenge the Complainant’s assertions. Therefore, the second element of the Policy has been fulfilled. C. Registered and Used in Bad Faith According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith: (i) circumstances indicating that the respondent has registered or the respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or (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; or (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 web site 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 web site or location or of a product or service on its web site or location. Considering the intensive investments in advertising that the Complainant has undertaken, the reputation that its trademarks IQOS and HEETS enjoy internationally, and that said fanciful trademarks do not correspond to dictionary words, it is safe to infer that said trademarks are highly distinctive. The fact that the Respondent chose to register the disputed domain names These facts also show that the Respondents have intentionally used the disputed domain names to attract, for commercial gain, Internet users to their websites by creating the impression among Internet users that the web sites to which the disputed domain names resolve are related to, associated with, or endorsed by the Complainant, which conduct constitutes bad faith under paragraph 4(b)(iv) of the Policy (see section 3.1.4 of the WIPO Overview 3.0.; see also trivago GmbH v. Whois Agent, Whois Privacy Protection Service, Inc. / Alberto Lopez Fernandez, Alberto Lopez,WIPO Case No. D2014-0365, and Jupiter Investment Management Group Limited v. N/A, Robert Johnson,WIPO Case No. D2010-0260). According to the evidence submitted by the Complainant, the Respondents have used the disputed domain names in an attempt to impersonate the Complainant for commercial gain, which also constitutes bad faith under the Policy (see also Philip Morris Products S.A. v. Domain Administrator, Registrant of iqosatismaganiz.com (apiname com) / Anl Girgin, Teknoloji Sarayi,WIPO Case No. D2019-0466; Self-Portrait IP Limited v. Franklin Kelly, supra, Friedman and Soliman Enterprises, LLC v. Gary Selesko, M&B Relocation and Referral, LLC,WIPO Case No. D2016-0800). Therefore, the third element of the Policy has been met. 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, Kiyoshi Tsuru
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ii) the disputed domain names
iii) the websites to which the disputed domain names
iv) the website to which the disputed domain name
v) the telephone number associated with all of the disputed domain names is the same.
WIPO Case No. D2019-0980; Dream Marriage Group, Inc. v. Romantic Lines LP, Vadim Parhomchuk,WIPO Case No. D2020-1344; and Valentino S.p.A. v. Qiu Yufeng, Li Lianye,WIPO Case No. D2016-1747).
Sole Panelist
Date: June 21, 2021
Full & Egal Universal Law Academy