The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Mohammed Amirul Azim, United Arab Emirates.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2021. On October 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 29, 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 November 2, 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 November 3, 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 November 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 28, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 29, 2021.
The Center appointed Christian Gassauer-Fleissner as the sole panelist in this matter on December 6, 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 Philip Morris Products S.A. is a company which is part of the group of companies affiliated to Philip Morris International Inc. (“PMI”). PMI is a leading international tobacco and smoke-free products company, with products sold in approximately 180 countries. In the course of transforming its business from combustible cigarettes to other smoke and smoke-free products PMI developed and sold a tobacco heating system called IQOS. IQOS is a heating device into which specially designed tobacco sticks under the brand names “HEETS”, “HeatSticks”, or “TEREA” are inserted and heated to generate a flavorful nicotine-containing aerosol (collectively referred to as the “IQOS System”).
Today, the IQOS System is available in key cities in around 66 markets across the world and has achieved considerable international success and reputation, and approximately 19.1 million relevant consumers use the IQOS System worldwide. To date, the IQOS System has been almost exclusively distributed through PMI’s official IQOS stores and websites and selected authorized distributors and retailers.
For its new IQOS products, the Complainant owns a large portfolio of trademarks. Among them, but not limited to, are the following trademark registrations:
- United Arab Emirates Registration IQOS (word) No. 211139 registered on March 16, 2016;
- United Arab Emirates Registration (word/stylised) No. 305079 registered June 27, 2019;
- United Arab Emirates Registration (device) No. 211143 registered on March 16, 2016;
- United Arab Emirates Registration HEETS (word) No. 256864 registered on December 25, 2017; and
- United Arab Emirates Registration (word/device) No. 256867 registered on December 25, 2017.
The disputed domain name was registered on August 21, 2021, and resolves to an English web shop for smoke/smoke-free products. The prices are listed in United Arab Emirates (“UAE”) dirham. The delivery policy scopes UAE.
5. Parties’ Contentions A. ComplainantThe Complainant argues that it is the registered owner of the IQOS trademark, which is registered in numerous jurisdictions including UAE. The disputed domain name incorporates the trademark entirely and only adds the non-distinctive word “village” and the generic top-level domain (“gTLD”) “.com.” Any Internet user when visiting a website provided under the disputed domain name will reasonably expect to find a website commercially linked to the owner of the IQOS trademark. Therefore, the disputed domain name is confusingly similar to the Complainant’s registered trademark.
The Complainant furthermore alleges that the Respondent has no rights or legitimate interests in respect to the disputed domain name. The Complainant is the owner of the IQOS trademark and has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register a domain name incorporating IQOS. The Respondent is neither making any noncommercial or fair use of the disputed domain name nor a bona fide offering of goods. Since competing products are sold and the Respondent uses the Complainant’s trademarks unauthorized, the disputed domain name falsely suggests an endorsement.
The Complainant contends that the registration and the use of the disputed domain by the Respondent is clearly done in bad faith. The Respondent used the purely imaginative and already registered term IQOS for its registration. Immediately after the registration, it was used in a web-shop offering smoke and smoke-free products produced by the Complainant and its competitors. It is beyond the realm of reasonable coincidence that the Respondent chose the disputed domain name without the intention of invoking misleading association with the Complainant. Additionally, the website uses the Complainant’s official product images without permission to sell smoke/smoke-free products. Obviously, the aim is to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s registered IQOS trademark. For the purpose of concealment, the Respondent uses a privacy service.
The Complainant requests that the disputed domain name be transferred from the Respondent to the Complainant.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 15(a) of the Rules requires that the Panel’s decision be made “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
It has been a consensus view in previous UDRP decisions that a respondent’s default (i.e., failure to submit a response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true (see section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
A complainant must evidence each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely that;
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(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 Panel finds that the disputed domain name is confusingly similar to the Complainant’s IQOS trademark, in which the Complainant has established rights through registration and use.
The disputed domain name incorporates the entirety of the Complainant’s trademark IQOS followed by the term “village” as well as a gTLD (“.com”). The trademark, consisting of an imaginative word, stands clearly independently from the common term “village”. An alternatively way of reading does not seem plausible.
Section 1.8 of the WIPO Overview 3.0 reads: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements.” Within the combination of the imaginary term “iqos” and the term “village”, the trademarked IQOS remains recognizable.
Furthermore, gTLDs are generally disregarded when evaluating the identity or confusing similarity of the Complainant’s mark to the disputed domain name under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the gTLD (see section 1.11 of the WIPO Overview 3.0).
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsWhile the overall burden of proof in UDRP proceedings is on the Complainant, panels have recognized that proving a Respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the Respondent. As such, where a complainant makes out a prima facie case that the Respondent lacks rights or legitimate interests, the burden of production on this element shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the Respondent fails to come forward with such relevant evidence, the Complainant is deemed to have satisfied the second element (see section 2.1 of the WIPO Overview 3.0). The Panel notes that the Respondent did not submit a response.
The Complainant makes its prima facie case by demonstrating without contradiction that it has not authorized the Respondent to use its marks and that the Respondent has not been commonly known by the disputed domain name.
The disputed domain name resolves to a web-shop and is therefore obviously used for commercial activity. In this regard, section 2.5.3 of the WIPO Overview 3.0 states:
“In the broadest terms, while panels will weigh a range of case-specific factors such as those listed above in section 2.5.2, judging whether a respondent’s use of a domain name constitutes a legitimate fair use will often hinge on whether the corresponding website content prima facie supports the claimed purpose (e.g., for referential use, commentary, criticism, praise, or parody), is not misleading as to source or sponsorship, and is not a pretext for tarnishment or commercial gain.
Notably in this regard, commercial gain may include the respondent gaining or seeking reputational and/or bargaining advantage, even where such advantage may not be readily quantified. [See further section 3.1.4.]
Similarly, a respondent’s use of a complainant’s mark to redirect users (e.g., to a competing site) would not support a claim to rights or legitimate interests.
While specific case factors have led panels to find that fair use need not always be categorically noncommercial in nature, unambiguous evidence that the site is not primarily intended for commercial gain, e.g., the absence of commercial or pay-per-click (PPC) links or references to a respondent’s business, would tend to indicate a lack of intent to unfairly profit from the complainant’s reputation.
Panels also tend to look at whether a response is filed (and the credibility thereof), whether the respondent provides false contact information or engages in cyberflight, and whether the respondent has engaged in a pattern of trademark-abusive domain name registrations.”
Several of the factors mentioned therein are relevant in this case. The Complainant has sufficiently demonstrated that its copyrighted material and registered trademark are being used on the website under the disputed domain without permission. As the website is set up as a web-shop, it is obvious that the use is for commercial gain. Due to the use of these materials, the risk of confusion by Internet users is enormous. The risk of implied affiliation is reinforced given the construction of the disputed domain name itself, namely the incorporation of the Complainant’s trademark in its entirety with the term “village”, implying a location where the Complainant’s goods are being sold. It seems obvious that Internet users would expect a connection to or endorsement by the Complainant. Moreover, the content at the disputed domain name is void of any clarifying statement as to its relationship, or lack thereof, to the Complainant. Viewed as a whole, fair use cannot be assumed.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithThe disputed domain name incorporates the IQOS trademark wholly. It consists of an imaginative word registered by the Complainant in 2016 for the purpose of selling smoke/smoke-free products. The disputed domain name was registered on August 21, 2021, and resolves to a web-shop selling smoke/smoke-free products under the Complainant’s brands. Agreement with the Complainant that this is not a coincidence is a must. The short period of time in which a professional-looking web-shop for products protected by the trademark was established does not allow any other conclusion than that the registration by the Respondent was already made in bad faith.
For comparable reasons, the use by the Respondent has to be qualified as bad faith, too. Section 3.1.4 of the WIPO Overview states: “Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.
Panels have moreover found the following types of evidence to support a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark: (i) actual confusion, (ii) seeking to cause confusion (including by technical means beyond the domain name itself) for the respondent’s commercial benefit, even if unsuccessful, (iii) the lack of a respondent’s own rights to or legitimate interests in a domain name, (iv) redirecting the domain name to a different respondent-owned website, even where such website contains a disclaimer, (v) redirecting the domain name to the complainant’s (or a competitor’s) website, and (vi) absence of any conceivable good faith use. [See also generally section 2.5.3.]
As noted in section 2.13.1, given that the use of a domain name for per se illegitimate activity such as the sale of counterfeit goods or phishing can never confer rights or legitimate interests on a respondent, such behavior is manifestly considered evidence of bad faith. Similarly, panels have found that a respondent redirecting a domain name to the complainant’s website can establish bad faith insofar as the respondent retains control over the redirection thus creating a real or implied ongoing threat to the complainant.”
Similar to the assessment in section 6B of this decision, an overall assessment shall be made, and the same factors are to be applied. Therefore, it shall be noted that the domain uses an imaginative word that is registered as a trademark by the Complainant and is used for a web-shop that sells the trademark protected products without the permission of the Complainant. The Respondent uses this trademark and copyright protected material on the website, suggesting a connection or endorsement by the Complainant, which in fact is not true. Obviously, the Respondent seeks for actual confusion for commercial gain. Additionally, the Respondent has failed to respond to the contentions brought by the Complainant in this proceeding. Again, viewed as a whole, bad faith use must be affirmed.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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,
Christian Gassauer-Fleissner
Sole Panelist
Date: December 21, 2021