The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Heets Iqos Store, United Arab Emirates (“UAE”) / Md Parvez, RegC, UAE
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 24, 2021. On August 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 1, 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 September 1, 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 September 2, 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 September 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 5, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 13, 2021.
The Center appointed Steven A. Maier as the sole panelist in this matter on October 19, 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 a company registered in Switzerland. It is a subsidiary of Philip Morris International, Inc., which is an international tobacco company.
The Complainant offers a range of “reduced risk products” under the name and trademark IQOS. The products comprise a controlled heating device into which tobacco sticks, marketed under trademarks including HEETS, are inserted in order to generate a nicotine-containing aerosol.
The Complainant is the owner of UAE trademark number 211139 for the word mark IQOS, registered on March 16, 2016 and of UAE trademark number 256864 for the word mark HEETS, registered on December 25, 2017. The Complainant is also the owner of UAE trademark number 261231 for the figurative mark shown below (the “Hummingbird Device”), registered on October 12, 2016:
The disputed domain name was registered on April 5, 2021.
According to evidence submitted by the Complainant, the disputed domain name has resolved to a website at “www.iqosheets-dbx.com” which is headed with the Hummingbird Device and the names “Heets iqos Store” and “IQOS HEETS DUBAI”. The website includes images of the Complainant’s products and offers such products for sale online. The website includes a statement (in a relatively late position on the website): “IQOSHEETSUAE (IQOS HEETS DUBAI) have no affiliation with Philip Morris International (PMI). This is not official website of PMI and IQOS.”
5. Parties’ Contentions A. ComplainantThe Complainant submits that its parent company is the world’s leading international tobacco company, selling products in over 180 countries. It states that its IQOS product was first introduced in Japan in 2014 and is now available in five different versions. It states that it has invested over USD 8.1 billion in promoting the IQOS products and that the system now has over 19.1 million customers in over 66 locations worldwide. It states that its IQOS products have been almost exclusively supplied via official or authorized stores and websites. The Complainant exhibits corporate information concerning its parent company and its IQOS products and system.
The Complainant submits that both its marks IQOS and HEETS comprise invented terms.
The Complainant submits that the disputed domain name, which consists of a combination of its trademarks IQOS and HEETS together with the term “dxb”, is identical or confusingly similar to those trademarks. It contends that the term “dxb” is the international airport code for Dubai and is intended to suggest that the disputed domain name has some official connection with the Complainant’s business in Dubai.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant states that it is not affiliated with the Respondent and has not authorized it to use its IQOS or HEETS trademarks. It further contends that the Respondent is neither making bona fide commercial use nor legitimate noncommercial or fair use of the disputed domain name. The Complainant submits that the Respondent’s website cannot represent bona fide commercial use of the disputed domain name because the disputed domain name itself is misleading in nature, and because the website pretends to be an authorized site of the Complainant’s by appropriating its IQOS and HEETS trademarks and the Hummingbird Device as well as the Complainant’s own product images. The Complainant states that the Respondent goes so far as to claim copyright in the images on its website, thereby further attempting to create a false association with the Complainant.
The Complainant submits that the Respondent’s disclaimer referred to above is insufficient to meet the test set out in Oki Data Americas, Inc. v. ASD, Inc.,
WIPO Case No. D2001-0903. In particular, the Complainant contends that the disclaimer is not sufficiently prominent, being located under the “Contact Us” page of the website, only after a number of opportunities to purchase the products on offer. The Complainant submits that the Respondent also fails to make clear that the trademarks featured on its website are the Complainant’s, or to make clear its own identity and the nature of its relationship with the Complainant. The Complainant submits that, on the contrary, the Respondent is deliberately seeking to give the impression that it is an official or approved website for the Complainant’s products in Dubai. It notes that, in addition to using the term “dxb” as part of the disputed domain name, the Respondent’s website indicates prices in the United Arab Emirates dirham currency and advertises delivery “24 hours across the UAE”.
The Complainant submits that the disputed domain name was registered and has been used in bad faith. The Complaint reiterates that IQOS and HEETS are invented terms and submits that it is obvious from the Respondent’s use of the disputed domain name to offer the Complainant’s products for sale that it intended the disputed domain name to refer to the Complainant’s trademarks. The Complainant repeats its contentions referred to above and submits that both the disputed domain name and the content of the Respondent’s website are deliberately designed to give the false impression that the website is an official or authorized site of the Complainant. The Complainant claims, in particular, that the Respondent registered and has used the disputed domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademarks.
The Complainant requests the transfer of the disputed domain name.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsIn order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are that:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe Complainant has demonstrated that it has registered trademark rights in the marks IQOS and HEETS. The disputed domain name comprises those two trademarks together with a hyphen and the term “dxb”, which does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademarks. The Panel therefore finds that the disputed domain name is confusingly similar to trademarks in which the Complainant has rights.
B. Rights or Legitimate InterestsThe Panel accepts the Complainant’s submissions that the trademarks IQOS and HEETS are distinctive, invented terms and that it is obvious from its sale of the Complainant’s products that the Respondent registered the disputed domain name with the intention of referring to those trademarks. The Panel also accepts the Complainant’s contention that the additional term “dxb” may refer to Dubai international Airport and that the Respondent’s website includes content aimed at Internet users within the UAE. In the circumstances, the Panel finds the disputed domain name to be inherently misleading in nature, as being likely to suggest to a significant number of Internet users that it is a domain name owned or authorized by the Complainant in connection with the sale of its products in Dubai.
Further, the Respondent has used the disputed domain name for the purpose of a website offering the Complainant’s products for sale. In certain limited circumstances, it may be permissible for an unauthorized reseller to use a domain name, which incorporates another party’s trademark for the purpose of reselling that trademark owner’s goods. The criteria accepted by UDRP panels for such legitimate use are set out in Oki Data Americas, Inc. v. ASD, Inc., supra, and are further discussed in section 2.8.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Those criteria include the requirements that the reseller’s website must accurately and prominently disclose the registrant’s relationship with the trademark holder.
In this case, the Panel finds that the Respondent’s website clearly fails, either accurately or prominently, to disclose the Respondent’s relationship (or more specifically lack thereof) with the Complainant. The website is headed with the Complainant’s IQOS and HEETS trademarks and the Hummingbird Logo and appropriates the Complainant’s copyright product images, while falsely claiming to be the copyright owner in the website content. These actions are plainly intended to present a false and misleading impression of an official connection between the Respondent’s website and the Complainant, which the Respondent’s limited disclaimer is far from effective to dispel. The Panel finds in the circumstances that the disputed domain name is being used in a deliberately misleading manner which cannot give rise to rights or legitimate interests and that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad FaithSimilar considerations apply to the issue of bad faith. As discussed above, it is clear from the Respondent’s choice and its use of the disputed domain name that it had the Complainant’s IQOS and HEETS trademarks in mind when it registered the disputed domain name and did so with the deliberate intention of referring to those trademarks. Furthermore, the Respondent has used the disputed domain name for the purpose of a website, which makes misleading use of the Complainant’s IQOS and HEETS trademarks and Hummingbird Device as well as its product images and fails accurately or prominently to disclose the Respondent’s lack of any affiliation with the Complainant. The Panel finds in particular that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website (paragraph 4(b)(iv) of the Policy).
The Panel therefore finds that the disputed 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 disputed domain name,
Steven A. Maier
Sole Panelist
Date: November 1, 2021