The Complainant is Philip Morris Products S.A. of Neuchâtel, Switzerland, represented by Boehmert & Boehmert, Germany.
The Respondent is Perfect Privacy, LLC of Jacksonville, Florida, United States of America / Anestasia K, Zodiac technologies of Kiev, Ukraine, internally represented. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Network Solutions, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 9, 2017. On June 9, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 12, 2017, 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 June 13, 2017 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 amendment to the Complaint on June 14, 2017. On June 18, 2017, the Respondent submitted a Response, inter alia requesting to receive a copy of the Complaint. The Center acknowledged receipt of the Response and informed the Respondent that the Center was verifying that the Complaint satisfied the formal requirements and that once compliance had been confirmed, the Respondent would be notified of the commencement of an administrative proceeding and the submitted documents would then be forwarded to the Respondent, in accordance with paragraph 4(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”).
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 June 27, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 17, 2017. No further communication was received from the Respondent and the Center notified the Parties of Commencement of Panel Appointment on July 18, 2017..
The Center appointed Gareth Dickson as the sole panelist in this matter on August 3, 2017. 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 a company within the group of companies affiliated to Philip Morris International Inc. It has developed and sells a smoke-free product called IQOS, into which a specially designed tobacco product is inserted and heated to generate a flavorful nicotine-containing vapor. This product is supplied under the brand names “HEETS” and “HeatSticks”.
The Complainant is the registered proprietor of a number of trade marks for HEETS, including:
- International Registration (word/device) No. 1326410 registered on July 19, 2016 designating amongst others the European Union (“EU”), New Zealand and Turkey;
- International Registration HEETS (word) No. 1328679 registered on July 20, 2016 designating amongst others the EU, New Zealand and Turkey; and
- Swiss Trademark HEETS (word) No. 58642/2016 registered on September 12, 2016 (the “HEETS Mark”),
(together, the “Marks”).
The Domain Name was registered on March 19, 2017, and resolves to an “IQOS Online Store”. 5. Parties’ Contentions A. Complainant
The Complainant alleges that since the Domain Name reproduces the HEETS trade mark in its entirety along with the term “online”, which is often used as an indication of an online shop, the Domain Name is confusingly similar to the Marks, including the HEETS Mark.
The Complainant states that its IQOS products, into which the HEETS product is inserted, have to date been distributed through its group’s official stores and websites alone.
The Complainant asserts that the Respondent is not known or in any way related to the Complainant and is not authorized to use the HEETS or IQOS trade mark.
The Complainant provides examples of the website found via the Domain Name (the “Website”), on which there appear to be offered for sale the Complainant’s HEETS and IQOS products. The Complainant states that it cannot be sure that the products offered there are genuine IQOS products, but alleges that the Website holds itself out as being that of an official dealer, or as being otherwise affiliated with the Complainant. In addition to using the HEETS trade mark in the Domain Name and on the Website, the Website also displays the Complainant’s IQOS mark.
The Complainant argues that the Website does not show any details regarding the entity responsible for the Website, does not acknowledge the Complainant as the owner of the HEETS and IQOS marks, contains only a small and imprecise disclaimer in its Privacy Policy referring to the fact that the Website is not affiliated with “PMI”, and makes unauthorized use of the Complainant’s copyright-protected photographs to offer products for sale (examples of which were filed with the Complaint).
The Complainant also states that the Respondent lacks rights or legitimate interests in respect of the Domain Name since it has not licensed or otherwise permitted the Respondent to use any of its trade marks or to register the Domain Name, and since the Respondent is not making a legitimate noncommercial or fair use of the domain name (but instead is using it to divert consumers away from the Complainant to the Respondent. It also argues that the Respondent fails to meet the requirements of Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, which sets out the conditions under which, it is generally accepted, a reseller of genuine goods may be able to establish rights or legitimate interests in respect of a domain name.
The Complainant also argues that the Domain Name was registered and is being used in bad faith, since the use of the Domain Name and the Website shortly after registration to offer IQOS and HEETS products demonstrates that the Respondent knew of the Marks when registering the Domain Name. It states that the “disclaimer” in the Privacy Policy is insufficient to refute its allegation of bad faith and relies on the content of the Website to support its allegation that the Respondent is seeking to give the impression that it is an authorized dealer. B. Respondent
The Respondent’s sole response to the Complaint has been to assert that it did not receive the Complaint and provide a blanket statement denying any wrongdoing. It made this assertion before the proceedings had formally commenced but did not file a response during the period for doing so. 6. Discussion and Findings
Under Paragraph 4(a) of the Policy, the Complainant bears the burden of proving that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
These criteria are cumulative. The failure of the Complainant to prove any one of them means the Complaint must be denied. A. Identical or Confusingly Similar
The Complainant is the registered proprietor of the Marks including the HEET Mark.
The Domain Name incorporates the HEETS Mark in its entirety and adds only the descriptive word “online” together with a generic top-level domain “.com”. Neither “online” nor “.com” qualifies the use of the HEETS Mark within the Domain Name in any way. As such it is confusingly similar with the HEETS Mark.
Accordingly the Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights. B. Rights or Legitimate Interests
The Panel accepts the Complainant’s statement that it has not licensed or otherwise permitted the Respondent to use any of the Marks within the Domain Name.
The Panel notes the possibility that the Respondent is engaged in the resale of genuine HEETS branded products. Such use can, in some circumstances, amount to a bona fide offering of goods or services under a domain name sufficient to establish rights or legitimate interests in respect of a domain name.
The leading decision on whether a respondent’s sale of a complainant’s goods can be bona fide is Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 (“Oki Data”). That decision sets out four requirements which must be met before a contested use of a domain name can be held to be bona fide. These requirements may be stated briefly as follows:
- The respondent must actually be offering the goods or services at issue.
- The respondent must use the site to sell only the trade marked goods; bait and switch is not permitted.
- The site must accurately disclose the registrant’s relationship with the trade mark owner.
- The respondent must not try to corner the market in all domain names, thus depriving the trade mark owner of reflecting its own mark in a domain name.
Even assuming that the first, second and fourth of these conditions is satisfied, the Respondent cannot benefit from Oki Data as its use of the Domain Name and Website gives a misleading and inaccurate impression that the Respondent is connected to the Complainant, and appears to have been designed to give that precise impression.
The Respondent has not substantially participated in this Complaint. As a result there is no evidence to refute the allegations made by the Complainant, which on their face are plausible and credible, regarding the lack of rights or legitimate interests in respect of the Domain Name.
Additionally, the Panel notes the Domain Name itself consists of the Complainant’s mark and a term with an “inherent Internet connotation” which suggests sponsorship or endorsement by the trademark owner. This further strengthens the Panel’s finding that the Respondent’s activities are not bona fide. See sections 2.5.1 and 2.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
In the absence of any authorization for its use of the HEETS Marks in the Domain Name, and with the Respondent being unable to benefit from the decision in Oki Data, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. C. Registered and Used in Bad Faith
The use of the Domain Name to point users to a Website misleadingly offering the Complainant’s HEETS products is strong evidence that the Respondent is using the Domain Name in bad faith and that that was the Respondent’s intention when registering the Domain Name. The fact that such use of the Domain Name began so soon after the Domain Name was registered confirms that the registration of the Domain Name was in bad faith.
The Respondent did not submit a substantive Response or participate in any other way after the commencement of the proceeding so there is no evidence to refute the prima facie case advanced by the Complainant.
The Panel therefore finds that the Domain Name was registered and is being used in bad faith. 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 Domain Name be transferred to the Complainant.
Gareth Dickson
Sole Panelist
Date: August 17, 2017
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