The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Withheld for Privacy ehf, Iceland / Mohamed Mostafa, Egypt.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 23, 2021. On August 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 23, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent, and contact information in the Complaint. The Center sent an email communication to the Complainant on August 24, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on August 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 August 25, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 14, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 15, 2021.
The Center appointed Ian Lowe as the sole panelist in this matter on September 20, 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 BackgroundThe Complainant is part of the group of companies affiliated to Philip Morris International, Inc. (“PMI”). PMI is an international tobacco company with products sold in around 180 countries. In 2014, PMI launched its IQOS System that comprises a device that heats specially designed tobacco sticks, under the brand name HEETS, sufficiently to generate a flavourful nicotine-containing aerosol without burning the tobacco. The IQOS System is now available in key cities in around 67 markets around the world and approximately 19.1 million consumers worldwide now use the IQOS System.
The IQOS System has been distributed almost exclusively through PMI’s official IQOS stores and websites and selected authorized distributors and retailers. It is not currently sold in Egypt.
The Complainant is the proprietor of a number of registered trademarks in respect of IQOS including International trademark number 1218246 IQOS registered on July 10, 2014, designating over 40 territories including the European Union and Egypt; and International trademark number 1338099 in respect of the IQOS device mark registered on November 22, 2016, designating over 30 territories including the European Union and Egypt. The Complainant is also the proprietor of International trademark registrations in respect of HEETS and HEETS device registered in 2016.
The Domain Name was registered on July 28, 2021. It resolves to a website provided in both English and Arabic (the “Website”) comprising an online shop purporting to offer for sale not only the Complainant’s IQOS System, including HEETS products, but also third-party products such as cigars. The Website prominently uses the IQOS trademark and copies of a number of the Complainant’s official product images. A copyright notice at the bottom of the Website claims copyright in the material on the Website. The Website does not show any details regarding the provider of the Website or acknowledge the Complainant as the brand owner of the IQOS System.
5. Parties’ Contentions A. ComplainantThe Complainant contends that the Domain Name is confusingly similar to its IQOS trademark, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Respondent registered and is using the Domain Name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsFor this Complaint to succeed in relation to the Domain Name the Complainant must prove that:
(i) the 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 in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe Complainant has uncontested rights in the IQOS trademark (the “Mark”), both by virtue of its trademark registrations and as a result of the goodwill and reputation acquired through its use of the Mark over a number of years. Ignoring the generic Top-Level Domain (“gTLD”) “.com”, the Domain Name comprises the entirety of the Mark, together with the words “eqypt” and “store”. In the view of the Panel, the addition of this geographic reference and dictionary term does not prevent a finding of confusing similarity between the Domain Name and the Mark. Accordingly, the Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate InterestsThe Complainant has made out a strong prima facie case that the Respondent could have no rights or legitimate interests in respect of the Domain Name. The Respondent has used the Domain Name not in connection with a bona fide offering of goods or services, but for a website featuring the IQOS word mark purporting to offer IQOS products without the authority of the Complainant. Furthermore, the Website feature unauthorized copies of images of the Complainant’s products, as well as the products of third parties. The Respondent is not an authorized sales agent of the Complainant and the Complainant’s products are not for sale in Egypt, yet in the Panel’s view the use of the Complainant’s Mark and images falsely represents to Internet users that the Respondent is authorized by the Complainant to sell the products in Egypt. The Panel considers that such unauthorized activity on the part of the Respondent does not give rise to rights or legitimate interests in respect of the Domain Name. The Respondent has chosen not to respond to the Complaint or to take any steps to counter the prima facie case established by the Complainant. In the circumstances, the Panel finds that the Respondent does not have any rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad FaithSince the Respondent has used the Domain Name for a website prominently featuring the Complainant’s Mark and has operated an online shop purporting to offer the Complainant’s products for sale, the Panel is in no doubt that the Respondent had the Complainant and its rights in the Mark in mind when it registered the Domain Name. In light of the Respondent’s use of the Mark and copies of the Complainant’s images of its products, the Panel considers that the Respondent has registered and used the Domain Name with a view to confusing Internet users into believing that the Website was associated with or authorised by the Complainant.
The Panel further notes that the website at the Domain Name offers for sale not only the purported Complainant’s products, but also third-party products such as cigars. In the Panel’s view, the use of the Domain Name for such activity, clearly with a view to commercial gain, amounts to paradigm bad faith registration and use for the purposes of the Policy, paragraph 4(b)(iv).
Accordingly, the Panel finds that the Domain Name has been registered and is being used in bad faith.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name
Ian Lowe
Sole Panelist
Date: October 1, 2021