The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Abdullah Mahmud, Bangladesh.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 22, 2021. On November 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 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 November 25, 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 26, 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 December 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 12, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 7, 2022.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on February 14, 2022. 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 Philip Morris International Inc. (“PMI”). PMI is an international tobacco company, with products sold in approximately 180 countries. PMI has developed a number of products, such as IQOS. IQOS is a controlled heating device specially designed for tobacco products under the brand names HEETS or HEATSTICKS. The tobacco products are inserted and heated to generate a flavorful nicotine-containing aerosol. The IQOS system was first launched in 2014. Today the IQOS system is available in key cities in around 67 markets across the world, and it has approximately 19.1 million consumers worldwide. It is almost exclusively distributed through PMI’s official IQOS stores and websites and selected authorized distributors and retailers.
The Complainant has trademark registrations in IQOS relating to its products, such as United Arab Emirates Registration no. 211139 registered on March 16, 2016, and United Arab Emirates Registration no. 305079 registered June 27, 2019.
The Domain Name was registered on July 19, 2020. At the time of filing the Complaint, and at the time of drafting the Decision, the Domain Name resolved to a website in English that allegedly sells the Complainant’s products as well as competing third party products of other commercial origin. The webpage indicates prices in United Arab Emirates dirham and presents the address of “International City, China Cluster - Dubai” (Dubai being a city and emirate in the United Arab Emirates), which indicates that the webpage is directed to the United Arab Emirates. The webpage reproduces without authorization a number of the Complainant’s official product images.
5. Parties’ Contentions A. ComplainantThe Complainant has registered trademark rights in IQOS. The Complainant submits that the Domain Name is confusingly similar to the Complainant’s trademark. The Domain Name adopts the Complainant’s trademark. The addition of the descriptive words “vape” and geographical abbreviation for the United Arab Emirates “uae” does not prevent a finding of confusing similarity under the first element of the UDRP.
The Complainant submits that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant asserts that the Respondent is unable to demonstrate rights or legitimate interests in the Domain Name. The Respondent has not been allowed by the Complainant to make any use of its trademark. The Domain Name resolves to a website that does not meet the requirements for a bona fide offering of goods. The website includes no proper information regarding the identity of the provider of the website. The website offers not only the Complainant’s products but also competing tobacco products and accessories of other commercial origin. The website uses the Complainant’s official product images without authorization. Consumers are misled to falsely believe that the website under the Domain Name is an official/endorsed distributor.
The Complainant argues that the Respondent had knowledge of the Complainant and its products at the time of registration of the Domain Name. The Respondent registered and used the Domain Name with the intention to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s registered IQOS trademark as to the source, sponsorship, affiliation, or endorsement of its website. By reproducing the Complainant’s trademark in the Domain Name and the title of the website, the Respondent’s website suggests the Complainant or an affiliated dealer as the source of the website. This is underlined by the Respondent’s use of the Complainant’s official product images. Additionally, the Respondent is not only using the Complainant’s IQOS trademark for the purposes of offering for sale the IQOS System, but also for offering third party products of other commercial origin. The Complainant further submits that the Respondent’s use of a privacy protection service to hide the Respondent’s identity also indicates bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings A. Identical or Confusingly SimilarThe Complainant has established rights in the trademark IQOS. The test for confusing similarity involves the comparison between the trademark and the Domain Name. In this case, the Domain Name adopts the Complainant’s trademark with the addition of “vape” and “uae”. It does not prevent a finding of confusing similarity under the first element of the UDRP.
When assessing confusing similarity, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) “.com”, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.
The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsThe Complainant has made unrebutted assertions that it has not granted any authorization to the Respondent to register a domain name containing the Complainant’s trademark or otherwise make use of the trademark. Based on the evidence, the Respondent is not affiliated or related to the Complainant in any way. There is no evidence that the Respondent has registered the Domain Name as a trademark or acquired unregistered rights. The way the Respondent has used the Domain Name to present itself as a reseller of the Complainant’s products, is not bona fide. The website under the Domain Name gives the false impression of a commercial relationship between the website and the Complainant. The website includes no proper information regarding the identity of the provider of the website, and the website uses the Complainant’s official product images without authorization. The Complainant submits that the Respondent has no rights or legitimate interests in the Domain Name. To make things worse, the website also offers competing tobacco products and accessories of other commercial origin.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithTaking into account the Respondent’s use of the Domain Name, the Panel concludes that the Respondent knew of the Complainant and its business when the Respondent registered the Domain Name.
The Respondent has attempted to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The Respondent’s website suggests that the Complainant or an affiliated dealer is the source. The mere registration of a domain name that is confusingly similar to a widely-known trademark can by itself create a presumption of bad faith, see WIPO Overview 3.0, section 3.1.4. The fact that the Respondent has not replied to the Complainant’s contentions further points to bad faith.
The Panel finds that the Domain Name was registered and is being used in bad faith, within the meaning 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 Domain Name
Mathias Lilleengen
Sole Panelist
Date: February 18, 2022