The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is shahriar hamed, Bangladesh.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 1, 2021. On December 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 2, 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 December 3, 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 December 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 December 10, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 30, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 4, 2022.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on January 13, 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 Inc. (hereinafter referred to as “PMI”), an international tobacco conglomerate that sells tobacco products in around 180 countries of the world.
One of its products is the IQOS system, a precisely controlled heating device into which specially designed tobacco products under the trademarks HEETS, HEATSTICKS or TEREA are inserted and heated to generate flavorful nicotine-containing aerosol. Such products are being marketed in key cities in around 66 markets across the world through official IQOS stores and websites and selected authorized distributors and retailers.
The Complainant owns among others the following trademarks (Annexes 6 and 7 to the Amended Complaint):
- United Arab Emirates registration No. 211139 for the word mark IQOS, registered on March 16, 2016, in class 34;
- United Arab Emirates registration No. 211143 for the device mark IQOS, registered on March 16, 2016, in class 34; and
- United Arab Emirates registration No. 305079 for the device mark IQOS, registered on June 17, 2019, in class 34.
The disputed domain name was registered on December 21, 2020, and presently resolves to an active online shop allegedly selling and offering the Complainant’s IQOS system in Dubai.
5. Parties’ Contentions A. ComplainantThe Complainant claims to have developed the IQOS system, first launched in Nagoya, Japan in 2014.
Asserting to have invested over USD 8.1 billion in extensive international sales and marketing efforts to promote its IQOS system, the Complainant states that its new product has obtained considerable international success and reputation, approximately having 19.1 million relevant consumers worldwide.
According to the Complainant, the use of the disputed domain name in connection with an online shop directed to the United Arab Emirates market, allegedly selling and offering the Complainant’s IQOS system as well as competing third party products, presenting the designation “Iqos Dubai is the leading online store based in Dubai, UAE” (with Dubai being a city and emirate in the United Arab Emirates), clearly indicates that the Respondent purports to be an official online retailer of the Complainant’s IQOS System in the United Arab Emirates, when it is not, by reproducing the Complainant’s trademarks, official product pictures and logos. In addition to that, an unremarkable disclaimer positioned at the bottom of the website available at the disputed domain name is ambiguous and inaccurate, and does not correctly identify the owner of the IQOS trademarks, and their relationship (or lack thereof) to the Respondent.
Under the Complainant’s view, the disputed domain name is confusingly similar to the Complainant’s IQOS trademark given that it is well accepted that the test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name to assess whether the mark is recognizable within the disputed domain name (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
Regarding the absence of the Respondent’s rights or legitimate interests, the Complainant argues that:
(i) it has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register a domain name incorporating its IQOS trademark;
(ii) the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, rather showing a clear intent to obtain an unfair commercial gain, with a view to misleadingly diverting consumers or to tarnish the trademarks owned by the Complainant;
(iii) the Respondent is not an authorized distributor or reseller of the IQOS System;
(iv) the criteria for a bona fide offering of goods or services as established in Oki Data Americas, Inc. v. ASD, Inc,WIPO Case No. D2001-0903 are not met (given that the Respondent is not only offering the Complainant’s products but also competing tobacco products and accessories of other commercial origin (i.e. the LAMDA product manufactured by Shenzen Original Technology Co. Ltd; and the Friequos and product and oil absorbing pads of unknown commercial origin);
(v) the disputed domain name in itself suggests at least an affiliation with the Complainant and its IQOS trademark, as the disputed domain name wholly reproduces the Complainant’s registered IQOS trademark together with the geographical indication;
(vi) the website to which the disputed domain name resolves uses the Complainant’s official product images without authorization, while at the same time falsely claiming copyright in this material - such illegitimate and false claim of rights in the Complainant’s official copyright protected material further supports the false impression, that the disputed domain name is endorsed by the Complainant, which it is not;
(vii) the website to which the disputed domain name resolves includes no information regarding the identity of the provider of the website which further serves to perpetuate the false impression of an official commercial relationship between the disputed domain name and the Complainant; and
(viii) the information included in the disclaimer is inaccurate and does not correctly identify the owner of the IQOS trademarks (which are owned by the Complainant) and their relationship (or lack thereof) to the Respondent; in addition to that, the disclaimer has been hidden on the website to which the disputed domain name resolves and does not offset the obvious risk of “initial interest confusion” and clearly shows that the objective of attracting visitors for financial advantage to the Respondent’s website through use of the Complainant’s registered IQOS trademark in the disputed domain name will have been achieved.
As to the registration and use of the disputed domain name in bad faith, the Complainant states that:
(i) the Respondent knew of the Complainant’s trademark when registering the disputed domain name;
(ii) the term IQOS is a purely imaginative term and unique to the Complainant, not commonly used to refer to tobacco products and therefore it is beyond the realm of reasonable coincidence that the Respondent chose the disputed domain name without intention of invoking a misleading association with the Complainant;
(iii) the purpose of the Respondent’s registration of the disputed domain name was to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s registered trademark as to the source, sponsorship, affiliation, or endorsement of its website;
(iv) by reproducing the Complainant’s registered trademark in the disputed domain name and in the title of the website, the Respondent’s website suggests the Complainant or an affiliated dealer of the Complainant as the source of the website which is not the case; being this suggestion also supported by the Respondent’s use of the Complainant’s official product images; and
(v) the choice to retain a privacy protection service so as to hide the Respondent’s true identity is a further indicative of bad faith as recognized WIPO Overview 3.0, section 3.6.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 4(a) of the Policy sets forth the following three requirements, which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(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.
The Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present in order to obtain the transfer of the disputed domain name.
In accordance with paragraph 14(a) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.
A. Identical or Confusingly SimilarThe Complainant has established rights over the IQOS trademark.
The disputed domain name reproduces in its entirety the Complainant’s IQOS trademark and is thus confusingly similar therewith, and the addition of the geographical term “Dubai” does not avoid a finding of confusing similarity under the Policy. See WIPO Overview 3.0, section 1.8.
For the reasons above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy provides a nonexclusive list of circumstances that may indicate the Respondent’s rights or legitimate interests in the disputed domain name. These circumstances are:
(i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, in spite of not having acquired trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain names. This entitles the Panel to draw any inferences from such default as it considers appropriate, pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make at least a prima facie case against the Respondent under the second UDRP element.
In that sense, and according to the evidence submitted, the Complainant has made a prime facie case against the Respondent which has not been commonly known by the disputed domain name and is neither an authorized reseller of the Complainant’s IQOS system nor has it been licensed or otherwise permitted to use any of the Complainant’s trademarks or to register a domain name incorporating its IQOS trademarks.
Also according to the evidence submitted by the Complainant, the use made of the disputed domain name in connection with an online shop allegedly offering the Complainant’s products, reproducing the Complainant’s IQOS logos in a prominent manner, together with the unauthorized reproduction of the Complainant’s official marketing materials and product images, clearly suggest at least an affiliation with the Complainant which in fact does not exist.
Selling other parties competing products at the online shop that resolves from the disputed domain name does not meet the criteria for a bona fide offering of goods or services as established in Oki Data Americas, Inc. v. ASD, Inc, supra.
Lastly, the disclaimer on the website is not clear as to the identity of the responsible for the online shop, not properly indicating who is the owner of the IQOS trademarks. Further, the presence of the disclaimer is not clear and sufficiently prominent on the website. Moreover, the Panel finds that the nature of the disputed domain name carries a risk of implied affiliation with the Complainant.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad FaithThe Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in respect of a disputed domain name, where a respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
In this case, both the registration and use of the disputed domain name in bad faith can be found pursuant to Policy, paragraph 4(b)(iv) in view of the reproduction of the Complainant’s products and official marketing materials at the online shop that is available at the webpage relating to the disputed domain name, which creates a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement thereof.
Moreover, the use of a privacy service is a further indication of the Respondent’s bad faith.
For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain name.
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
Wilson Pinheiro Jabur
Sole Panelist
Date: January 17, 2022