WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Philip Morris Products S.A. v. md akib, vape

Case No. D2020-2399

1. The Parties

The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.

The Respondent is md akib, vape, Bangladesh.

2. The Domain Name and Registrar

The disputed domain name <iqosheetsuae.org> is registered with Internet Domain Service BS Corp (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 16, 2020. On September 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 17, 2020, 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 21, 2020 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 22, 2020.

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 22, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 12, 2020. The Center received email communication from a third party on September 26, 2020. On September 28, 2020, the Center sent an email communication to the third party asking it to identify itself and its relation to the Respondent. On the same date, the Center received an email communication from the third party confirming that it is the registrant of the disputed domain name. The Registrar confirmed that the third party is the registrant of the disputed domain name.

On October 1, 2020, the Center sent a Possible Settlement email to the Parties. The Complainant did not submit a request for suspension, hence the proceeding continued. Accordingly, on October 15, 2020, the Center informed the Parties that it would proceed to appoint a panel.

The Center appointed Beatrice Onica Jarka as the sole panelist in this matter on October 22, 2020. 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 Background

The Complainant is Philip Morris Products S.A. part of a group of companies affiliated with Philip Morris International Inc. (PMI), an international tobacco company. PMI sells a product branded IQOS, which is a controlled heating device into which specially designed tobacco products under the brand names HEETS or HEATSTICKS are inserted and heated to generate a nicotine-containing aerosol. The IQOS system also consists of an IQOS Pocket Charger, specially designed to charge the IQOS Holder (collectively referred to as the IQOS System). The IQOS System was first launched by PMI in Nagoya, Japan in 2014 and has obtained a 18.3% share of the market in Japan. By today, the IQOS System is available in key cities in around 57 markets across the world. As a result of a USD 6 billion investment and extensive international sales (in accordance with local laws), the IQOS System has achieved international success and reputation.

For its new smoke-free products the Complainant owns a large portfolio of well-known trademarks.
Among them, but by no means limited to, are the following trademark registrations:

- United Arab Emirates Registration IQOS (word) No. 211139 registered on March 16, 2016.
- United Arab Emirates Registration IQOS (word/device) No. 211143 registered on March 16, 2016;
- United Arab Emirates and 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.
Trademarks”):

The WhoIs at the time of the submission of the Complaint showed “vape” as registrant organization and refer to a private registration, with some details being redacted for privacy reasons, so the identity of the real owner and operator of the domain name was originally concealed.

The disputed domain name was registered on August 8, 2020. The disputed domain name is linked to an online shop selling and offering what purports to be the Complainant’s IQOS System.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

- the Complainant is the registered owner of the IQOS and HEETS trademarks in numerous jurisdictions, including, but not limited to the United Arab Emirates.

- it cannot be questioned that the disputed domain name is confusingly similar to the IQOS and HEETS trademark registrations of the Complainant. The disputed domain name identically adopts the Complainant’s IQOS and HEETS trademarks.

- it is further established that the addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP.

- 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 and HEETS trademarks, such unlawful association being exacerbated by the use of the Complainant’s official product images without the Complainant’s authorization.

- the Respondent lacks any right or legitimate interest in the disputed domain name.

- the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register a domain name incorporating its IQOS and HEETS trademarks (or a domain name which will be associated with this trademark).

- the Respondent is not making a legitimate noncommercial or fair use of the domain name.

- on the contrary, the Respondent’s behavior shows 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, as the Respondent is not an authorized distributor or reseller of the IQOS System. Also, the website provided under the disputed domain name does not meet the requirements set out by numerous panel decisions for a bona fide offering of goods under Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 criteria.

- in this case, the disputed domain name in itself suggests at least an affiliation with the Complainant and its IQOS and HEETS trademarks, as the disputed domain name wholly reproduces the Complainant’s registered IQOS and HEETS trademarks together with the geographical abbreviation for the United Arab Emirates, i.e. “uae”. In addition, the owner / administrator of the website, prominently and without authorization presents the Complainant’s registered IQOS and HEETS trademarks appearing at the top left of the website, as well as using the Complainant’s official product image within the tab interface of the website, where relevant consumers will usually expect to find the name of the online shop and/or the name of the website provider.

- the website further uses the Complainant’s official product images without authorization, while at the same time falsely claiming copyright in this material.

- the website includes no information regarding the identity of the provider of the website, which is only identified as “IQOS HEETS Dubai” on the website, being a name which similarly includes the Complainant’s registered IQOS and HEETS trademarks (without authorization) and further serves to perpetuate the false impression of an official commercial relationship between the website and the Complainant. As the Complainant’s IQOS System is primarily distributed through official / endorsed stores, in this case Internet users / relevant consumers are clearly misled regarding the relationship between the website and the Complainant, and will falsely believe the website under the disputed domain name to be an official / endorsed distributor. Such use of the disputed domain name cannot be considered a bona fide offering of goods and does not establish a legitimate interest on behalf of the Respondent.

- it is evident from the Respondent’s use of the disputed domain name that the Respondent knew of the Complainant’s IQOS and HEETS trademarks when registering the disputed domain name.

- the Respondent started offering the Complainant’s IQOS System immediately after registering the disputed domain name, knowing that the terms IQOS and HEETS are purely imaginative terms and unique to the Complainant.

- from the Respondent’s use of the disputed domain name it results that the Respondent registered and used the disputed 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 and HEETS trademarks as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location, which constitutes registration and use in bad faith pursuant to paragraph 4(b)(iv) of the Policy.. By reproducing the Complainant’s registered trademark in the disputed domain name and the title of the website, the Respondent’s website clearly suggests the Complainant or an affiliated dealer of the Complainant as the source of the website, which it is not. This suggestion is further supported by the Respondent’s use of the Complainant’s official product images, accompanied by a copyright notice claiming the copyright for the website and its contents.

- 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. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that the Complainant has rights in the IQOS and HEETS trademarks acquired through use and registration.

The disputed domain name is confusingly similar to the IQOS and HEETS trademark registrations of the Complainant, as it identically adopts the Complainant’s IQOS and HEETS trademarks, (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), section 1.7) followed by the geographical term “uae”.

Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element (see WIPO Overview 3.0, section 1.8).

The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant’s trademarks and the first element under of paragraph 4(a) of the Policy is therefore established.

B. Rights or Legitimate Interests

In order to establish the second element of the Policy, the Complainant has to show that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that showing, the burden of production shifts to the Respondent, according to WIPO Overview 3.0, section 2.1.

In this case, the Respondent, properly notified, has not rebutted any of the Complainant contentions as to:

- the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register a domain name incorporating its IQOS and HEETS trademarks (or a domain name which will be associated with this trademark).

- the Respondent is not making a legitimate noncommercial or fair use of the domain name.

- on the contrary, the Respondent’s behavior shows 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, as the Respondent is not an authorized distributor or reseller of the IQOS System and website provided under the disputed domain name does not meet the requirements set out by numerous UDRP decisions for a bona fide offering of goods under Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 criteria.

- the disputed domain name in itself suggests at least an affiliation with the Complainant and its IQOS and HEETS trademarks, as the disputed domain name wholly reproduces the Complainant’s registered IQOS and HEETS trademarks together with the geographical abbreviation for the United Arab Emirates, i.e. “uae”.

- the owner / administrator of the website, prominently and without authorization presents the Complainant’s registered IQOS and HEETS trademarks appearing at the top left of the website, as well as using the Complainant’s official product image within the tab interface of the website, where relevant consumers will usually expect to find the name of the online shop and/or the name of the website provider.

- the website further uses the Complainant’s official product images without authorization, while at the same time falsely claiming copyright in this material.

This Panel finds the contentions of the Complainant fully documented. Corroborated with the fact that such contentions had not been rebutted by the Respondent the Panel agrees with the Complainant that the registration and use of a known trademark in a domain name cannot be considered as bona fide.

In addition, noting the composition of the disputed domain name, the Panel finds that any Internet user when visiting the website provided under the disputed domain name will reasonably expect to find a website commercially linked to the owner of the IQOS and HEETS trademarks (see WIPO Overview 3.0, section 2.5.1).

Therefore, in the opinion of this Panel, the Complainant has fully demonstrated that the Respondent lacks any rights or legitimate interests in the disputed domain name and consequently, the second element of paragraph 4(a) of the Policy is therefore established.

C. Registered and Used in Bad Faith

This Panel considers that from the composition of the disputed domain name and the Respondent’s use of the disputed domain name that the Respondent knew of the Complainant’s IQOS and HEETS trademarks when registering the disputed domain name.

The Respondent started offering the Complainant’s IQOS System immediately after registering the disputed domain name, knowing that IQOS and HEETS are purely imaginative and unique to the Complainant which indicates, in the opinion of this Panel, that the Respondent registered and used the disputed 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 and HEETS trademarks as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.

By reproducing the Complainant’s registered trademark in the disputed domain name and the title of the website, the Respondent’s website clearly suggests the Complainant or an affiliated dealer of the Complainant as the source of the website, which it is not. This suggestion is further supported by the Respondent’s use of the Complainant’s official product images, accompanied by a copyright notice claiming the copyright for the website and its contents under the text “IOQS HEETS UAE 2020” (with a typo when referring to IQOS).

Considering the contentions of the Complainant, the Panel holds that the disputed domain name was registered and used in bad faith and the third element of paragraph 4(a) of the Policy is therefore established.

7. Decision

For 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 <iqosheetsuae.org> be transferred to the Complainant.

Dr. Beatrice Onica Jarka
Sole Panelist
Date: November, 4, 2020