The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Zia Khan, Jrox, 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 November 25, 2021. On November 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 26, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as 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 November 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 19, 2021. On November 29, 2021, and December 14, 2021, the Respondent sent email communications to the Center but did not submit any formal response. On December 20, 2021, the Complainant requested to suspend the administrative proceeding. On December 21, 2021, the administrative proceeding was suspended until January 21, 2022, for purposes of settlement discussions concerning the disputed domain name. On January 11, 2022, the Complainant requested to reinstitute the proceeding. On January 11, 2022, the Center informed the Parties of the reinstitution of the proceeding and that, pursuant to paragraph 6 of the Rules, it will proceed to panel appointment.
The Center appointed Anna Carabelli as the sole panelist in this matter on January 17, 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 the Philip Morris International group of companies. The Complainant‘s group is engaged in the production of tobacco products and has developed a tobacco heating system under the brand name IQOS (Annexes 4 and 5 to the Complaint).
IQOS is a heating device into which a specially designed tobacco sticks branded “HEETS” (or “HeatSticks” or “TEREA”) are inserted and heated to generate a nicotine contained aerosol. The IQOS system was first launched in Japan in 2014 and is currently distributed almost exclusively through the Complainant’s official stores and websites in around 66 markets across the world.
The Complainant owns a portfolio of registered trademarks for the above brands including the following trademark registrations:
- United Arab Emirates Registration IQOS (word) No. 211139 registered on March16, 2016;
- United Arab Emirates Registration IQOS (word/stylised) No. 305079 registered June 27, 2019;
- United Arab Emirates Registration IQOS (word/stylised) No. 257763 registered on April 22, 2018;
- United Arab Emirates Registration IQOS (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 HEETS (word/device) No. 256867 registered on December 25, 2017.
(Annexes 6 and 7 to the Complaint):
The disputed domain name was registered on October 8, 2021, and resolves to a website allegedly selling online the Complainant’s IQOS and HEETS branded products as well as competing third parties tobacco products and accessories (such as cleaning apparatus) which are not endorsed or otherwise approved by the Complainant. All prices are in United Arab Emirates dirham currency. The Complainant’s trademark IQOS appears at the top of each page of the Respondent’s website (Annex 8 to the Complaint).
5. Parties’ Contentions A. ComplainantThe Complainant asserts and contends that:
- The disputed domain name is identical or confusingly similar with the Complainant’s trademark IQOS, which is entirely incorporated in the disputed domain name with the addition of the suffix “dxb” and the generic Top-Level Domain (“TLD”) “.com”. In this connection the Complainant notes that (i) the addition of a geographical abbreviation is insufficient in itself to avoid a finding of confusing similarity and (ii) the applicable TLD in a domain name is a standard registration requirement and as such is disregarded under the first element confusing similarity test;
- The Respondent has no rights or legitimate interests in the disputed domain name. In this connection the Complainant contends that the Respondent (i) has not been authorized, licensed or otherwise permitted to use the Complainant’s IQOS trademark, (ii) is not an authorized distributor of the IQOS system, and (iii) is selling competing tobacco products and/or accessories of other commercial origin as well as infringing third party items. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name and does not meet the requirement set out by numerous panel decisions for a bona fide offering of goods. In particular, the Respondent would be unable to avail itself of the safe harbor to be found in the case of Oki Data Americas Inc. v ASD Inc.,WIPO Case No. D2001-0903. With regard to the requirements put forward in that case, the Complainant submits that the Respondent is offering the Complainant’s products alongside competing tobacco products and accessories of other commercial origin and this in itself is sufficient to exclude a legitimate interest on the basis of a bona fide offering of goods; and
- The disputed domain name was registered and is being used in bad faith. In this connection the Complainant submits that its trademark IQOS is purely an imaginative term and is well known worldwide. The Respondent’s use of the disputed domain name in connection with the Complainant’s IQOS branded product clearly indicates that the Respondent knew of the Complainant’s IQOS trademark when registering the disputed domain name.
The Complainant also submits that when visiting the website provided under the disputed domain name, Internet users will reasonably expect to find a website commercially linked to the owner of the IQOS trademark. The Respondent shows a clear intent to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s IQOS trademark.
Finally, the fact that the Respondent is using a privacy protection service to hide its true identity may in itself constitute a factor indicating bad faith.
B. RespondentThe Respondent did not formally reply to the Complainant’s contentions. On November 29, 2021, the Respondent sent an email communication to the Center acknowledging receipt of the Complaint and stating that it would have “work” on it. On December 14, 2021, in a second email to the Center the Respondent wrote: “As per the following email I have close www.iqosdxb.com I want to sell out this domain. I had some investment please help me in the selling of this domain to the party who file a complaint 2021.”
After a suspension for purposes of settlement discussions between the parties, the proceeding was reinstituted at the request of the Complainant. The Respondent submitted no further communications or formal Response.
6. Discussion and FindingsParagraph 15(a) of the Rules instructs the Panel to decide the Complaint based on the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(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.
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which for the purposes of paragraph 4(a)(iii) of the Policy, shall be evidence of registration and use of a domain name in bad faith.
Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which, if proved by the Respondent, shall be evidence of the Respondent’s rights to or legitimate interests in the disputed domain name for the purpose of paragraph 4(a)(ii) of the Policy above.
A. Identical or Confusingly SimilarThis Panel finds that the Complainant has established rights over the trademark IQOS based on the trademark registrations cited under section 4 above. The disputed domain name consists of the whole of the Complainant’s registered mark IQOS with the addition of the suffix “dxb” and the generic Top-Level Domain “.com”.
Many UDRP decisions have found that a disputed domain name is confusingly similar to a complainant’s trademark where the disputed domain name incorporates the complainant’s trademark in its entirety (See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0”).
The letters “dxb” are generally recognized and understood as the geographical abbreviation for Dubai and it is well established that the addition of merely generic, descriptive or geographical wording to a trademark in a domain name does not prevent a finding of confusing similarity (see section 1.8 of the WIPO Overview 3.0). Regardless of the interpretation of the added term, the addition does not prevent the trademark from being recognizable in the disputed domain name.
The addition of the Top-Level Domain “.com” is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. (See the WIPO Overview 3.0, section 1.11).
Therefore, this Panel finds that that the disputed domain name is confusingly similar with the Complainant’s trademark. As a result, the Complaint succeeds under this element of the Policy.
B. Rights or Legitimate InterestsThe Complainant states that it has not authorized, licensed or permitted the Respondent to use the Complainant’s trademark IQOS in the disputed domain name. Given the presence of the online shop at the corresponding website, it is not open to the Respondent to argue that it is making a noncommercial use of the disputed domain name.
On the other hand, the Respondent is not an authorized distributor or reseller of the Complainant’s products. Based on the evidence submitted by the Complainant, the Respondent is selling online the IQOS System alongside competing tobacco products and/or accessories of other commercial origin, including third party cleaning apparatus which allegedly infringes the Complainant’s IQOS trademark. The Panel agrees with the Complainant that this would exclude a legitimate interest in the form of bona fide offering of goods under the case of Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. Moreover, the website to which the disputed domain name resolves fails to accurately disclose the relationship, or lack thereof, to the Complainant and noting the risk of implied affiliation caused by the identical reproduction of the Complainant’s mark in the construction of the disputed domain name, this is as a whole cannot constitute fair use.
This Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. As stressed by many UDRP decisions, in such a case the burden of production shifts to the Respondent to rebut the evidence (see WIPO Overview 3.0, section 2.1). By not submitting a formal Response, the Respondent has failed to invoke any circumstance, which could have demonstrated any rights or legitimate interests in the disputed domain name under paragraph 4(c) of the Policy.
Therefore, this Panel finds that the Complaint also succeeds under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithAccording to paragraph 4(a)(iii) of the Policy, the Complainant must establish that the disputed domain name has been registered and is being used in bad faith.
The disputed domain name incorporates the IQOS mark and is being used by the Respondent to sell third party products along with official products of the Complainant or at least products which evidently feature its registered mark. The Complainant’s trademark IQOS also appears at the top of each page of the Respondent’s website, as shown by the evidence submitted by the Complainant (Annex 8).
All the above indicates that the Respondent had the Complainant or its trademark in mind when selecting the disputed domain name and suggests that the disputed domain name was registered and used in bad faith with a deliberate intent to create an impression of an association with the Complainant and attract, for commercial gain, Internet users.
Therefore the Panel finds that the Complainant has demonstrated that the Respondent registered and used the disputed domain names in bad faith according to 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,
Anna Carabelli
Sole Panelist
Date: January 31, 2022