The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Name Redacted / Mohammed Azizul Karim Shikder, 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 June 14, 2021. On June 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 16, 2021, the Registrar transmitted by email to the Center its verification response disclosing the information of the registrant and providing the contact details. The Center verified that the 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 June 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 12, 2021. The Respondent’s communication was received by the Center on June 23, 2021. On June 24, 2021, the Possible Settlement email was sent to Parties by the Center. On June 28, 2021, the request for suspension email sent by the Complainant was received by the Center, the Administrative Proceeding was suspended on the same day. On July 12, 2021, the notice of Reinstitution of Proceeding was sent to Parties by the Center as requested by the Complainant. The due date for Response was extended to July 26, 2021 accordingly. The Commencement of Panel Appointment Process was sent to Parties on July 27, 2021. The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on August 2, 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 an international company that manufactures smoking materials and substitute products, including a product named IQOS. IQOS is a device for heating specially designed tobacco products, branded HEETS or HEATSTICKS, or an electronic cigarette, both of which function to generate a nicotine-containing aerosol as a substitute for a combustible cigarette. As an illustration of the scale of the IQOS enterprise, USD 8.1 billion has been invested in its development and the number of its users is some 17.6 million. The Complainant holds numerous trademarks in connection with IQOS, including the following: IQOS, word mark, United Arab Emirates, registered on March 16, 2016, Registration number 211139, in class 34; IQOS, stylised, United Arab Emirates, registered on June 27, 2019, Registration number 305079, in class 34; IQOS, stylised with colour, United Arab Emirates, registered April 22, 2018, Registration number 257763, in class 34; Hummingbird Logo (device only), United Arab Emirates, registered on January 18, 2018, Registration number 261231, in class 34; HEETS, word mark, United Arab Emirates, registered on December 25, 2017, Registration number 256864, in class 34; HEETS, stylised, United Arab Emirates, registered on December 25, 2017, Registration number 256867, in class 34; THIS CHANGES EVERYTHING, word mark, United Arab Emirates, registered on April 28, 2018, Registration number 264722, in class 34. Little background information has been provided by the Respondent except for the contact information provided for the purpose of registration of the disputed domain name on May 21, 2021, and a different name provided in email communications with the Center. The disputed domain name resolves to a website displaying multiple pages of illustrations of the Complainant’s products and of what appear to be similar or related products under competing brand names. 5. Parties’ Contentions A. Complainant The Complainant says the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The disputed domain name incorporates the Complainant’s trademark IQOS and is therefore confusingly similar to the trademark. Additional words following the trademark are the non-distinctive word “festival”, and “uae”, the latter being the geographical abbreviation for the United Arab Emirates. The generic Top-Level Domain (“gTLD”) “.com” should be disregarded for the purposes of comparison. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name and says it has made a prima facie case to this effect. The Respondent has not been licensed or otherwise permitted to use any of the Complainant’s trademarks or to register a domain name associated with the Complainant’s trademarks, and is not a reseller of the Complainant’s products. The website of the disputed domain name offers competing products and a product improperly bearing the Complainant’s trademark, therefore the supply of goods or services through the Respondent’s website is not bona fide. The Complainant says the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, the website of which suggests an affiliation with the Complainant, and fails to disclose its true ownership. The Complainant further contends that the disputed domain name was registered and is being used in bad faith. The Complainant says its trademark IQOS is purely imaginative and the Respondent must have been aware of it at the time of registration of the disputed domain name, which was put to use as a website immediately after registration. The website displays the Complainant’s trademark and the Complainant’s official product images, and uses the Complainant’s trademark to state “Copyright © 2021 | Iqos Festival UAE”. The Complainant says the Respondent has registered and is using the disputed domain name to attract Internet users by confusion with the Complainant for commercial gain. The Complainant has cited previous decisions under the Policy that it considers relevant to this Complaint. The Complainant requests the transfer of the disputed domain name. B. Respondent The Respondent did not submit a formal response but sent an email to the Center on June 23, 2021. The thrust of the message was that the Respondent did not realise he was doing wrong, he apologised, and would immediately take down the website and also delete his similar presences on Facebook and Instagram. Following a formal suspension of the proceedings by the Complainant in accordance with paragraph 17(a) of the Rules, the Respondent said in an email to the Center on July 8, 2021 that he had deleted everything and wanted the proceedings to be concluded. The Parties did not reach a settlement and the proceeding was reinstated. The Respondent did not submit a formal Response by the extended date of July 26, 2021. 6. Discussion and Findings A. Procedural Matters Identity of the Respondent Paragraph 1 of the Rules states that “the holder of a domain-name registration against which a complaint is initiated” is the Respondent. On enquiry by the Center, the Registrar disclosed the name provided by the underlying registrant for the registration of the disputed domain name, and a contact email address. The Respondent received the Center’s emails at that address and replied from the same address, stating his name to be Azizul karim shikder in the message dated June 23, 2021, and Mohammed Azizul Karim Shikder in the message dated July 8, 2021, and also indicated an alternative email address that matched this name. The Panel accepts Mohammed Azizul Karim Shikder’s identification of himself as the holder of the disputed domain name registration and therefore as the proper Respondent. In the exercise of its powers to conduct limited factual research into matters of public record (section 4.8, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the Panel has ascertained that the name provided to the Registrar initially for registration of the disputed domain name is a name held by a number of living people. The Respondent has not provided any explanation on why a different name was used for the registration of the disputed domain name, and has merely claimed that he “opened this site at the persuasion of a friend”. The Panel finds it more probable than not that none of those registrant names correspond to the true underlying registrant, and that the Respondent does not have that name. Noting that the Panel finds that the disputed domain name was registered by the Respondent, and probably without the real involvement of any person of a name similar to the one provided as registrant’s name, the Panel has redacted that name from this Decision. In order to give effect to the Decision, the Registrar needs to reconcile the Decision with the name provided by the registrant. The Panel has attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the disputed domain name. The Panel has authorized the Center to transmit Annex 1 of this Decision to the Registrar as part of the order in this proceeding, and has indicated that Annex 1 shall not be published pursuant to the Rules, paragraph 16(b). Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute-resolution provider, in compliance with the Rules, that: “(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) you have no rights or legitimate interests in respect of the domain name; and (iii) your domain name has been registered and is being used in bad faith”. The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute. B. Identical or Confusingly Similar The Panel is satisfied by the evidence produced that the Complainant has rights in the trademarks listed in section 4 above. The disputed domain name may be read as the term “iqos”, and the words “festival”, and “uae”, the last being coincident with the Respondent’s stated domicile of the United Arab Emirates. The term “iqos” in the disputed domain name is identical to the Complainant’s registered trademark IQOS, and the dictionary and geographical terms “festival” and “uae” do not prevent a finding of confusing similarity. The Panel finds confusing similarity between the disputed domain name and the Complainant’s trademark and finds for the Complainant under paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests The Complainant has stated a prima facie case to the effect that it has no association with the Respondent and has not licensed or otherwise permitted the Respondent to use the Complainant’s trademarks or to register the disputed domain name. Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation: “(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are 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 Respondent, in his emails, has stated categorically that he does not contest the proceedings, saying for example, “I say again I am not interested in facing any kind of challenge with you”. It nevertheless remains for the Complainant to prove its case. The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests, and having regard to all the circumstances the Panel cannot foresee any realistic probability of any of the provisions of paragraph 4(c) of the Policy being satisfied by the Respondent. The Panel finds for the Complainant under paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances, without limitation, that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely: “(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or (ii) you have 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 you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location”. The screen captures produced in evidence show the disputed domain name resolving to an extensive website that may reasonably be described as projecting a professional appearance, except for the incomplete pages referred to below. In a large number of pages the Respondent’s website variously displays the Complainant’s IQOS trademark and Hummingbird Logo, displays pictures of products labelled as IQOS products, some of which are stated by the Complainant to be inauthentic, and displays a considerably greater number of products labelled with different brand names disclaimed by the Complainant. There is an opportunity to open an account and some pages provide a shopping cart. There are also logos displayed for PayPal, ADCB and Emirates NBD, being financial institutions, and a proforma page inviting product reviews. Some pages use the Complainant’s trademark to claim “Copyright © 2021 | Iqos Festival UAE”. A set of website pages produced in the screen capture evidence appears to be in incomplete draft form. These particular pages have, for example a heading “Who We Are”, a photograph of “Our Team”, and headings “Worldwide Shipping”, “Best Quality”, “Best Offers”, and “Secure Payments”, all padded with excerpts from the standard printers’ dummy script Lorem ipsum... On the totality of the evidence the Panel finds the Respondent’s website to have been used with intent to attract Internet users for commercial gain by confusing them into believing, at least initially, that they were visiting a website owned or endorsed by the Complainant, constituting bad faith within the meaning of paragraph 4(b)(iv) of the Policy. The Panel further finds on the balance of probabilities that the disputed domain name was registered for the bad faith purpose for which it has been used. Accordingly, on the evidence and on the balance of probabilities, registration and use of the disputed domain name are found to have been in bad faith in the terms of 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 In Annex 1 attached to this Decision, for the avoidance of doubt and in order for this order to be implemented, the Panel identifies the name of the person on record as being the registrant of the disputed domain name and orders that the disputed domain name In accordance with paragraph 16(b) of the Rules, the Panel directs that the Center shall not publish Annex 1 of this Decision. Dr. Clive N.A. Trotman
Sole Panelist
Date: August 9, 2021
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