The Complainant is Philip Morris Products S.A. of Neuchâtel, Switzerland, represented by Boehmert & Boehmert, Germany.
The Respondent is Michal Kovrzek of Prague, Czech Republic. 2. The Domain Name and Registrar
The disputed domain name is registered with Ascio Technologies Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 14, 2017. On September 14, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. Reminders were sent to the Registrar on September 22 and September 28, 2017. On September 28, 2017, 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 September 29, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 19, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 20, 2017.
The Center appointed Zoltán Takács as the sole panelist in this matter on November 6, 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.
The language of this administrative proceeding is English, that being the language of the Registration Agreement. 4. Factual Background
The Complainant is a company which is part of the group of companies affiliated to Philip Morris International Inc. (“PMI”). PMI is the leading international tobacco company, with products sold in approximately 180 countries worldwide.
Over the past decade, PMI has been researching and developing a new portfolio of smoke-free products which it calls Reduced Risk Products.
One of these smoke-free products developed and sold by PMI is IQOS. The IQOS system consists of an electronically controlled heating device called the IQOS Holder, into which a specially designed and manufactured tobacco stick under the brand names “HEETS” and “HeatSticks” is inserted and heated to generate a flavorful nicotine-containing tobacco vapor.
The Complainant is owner of, among others, International Trademark Registration No. 1326410 for the mark HEETS, registered on July 19, 2016 for goods and services of Classes 9, 11 and 34 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks.
The disputed domain name was registered on August 11, 2017 and has until recently been linked to an alleged online shop offering among others the Complainant’s HEETS products.
On September 1, 2017 the Complainant provided a cease and desist letter to the Respondent requesting that the Complainant refrains from further infringing use of the domain name and further transfers the disputed domain name to the Complainant.
The Respondent reacted to this letter of the Complainant by sending a letter in Czech language and has slightly amended the website provided under the disputed domain name, including a disclaimer in the website stating that he has been forced to remove graphic and text expressions related to the products of PMI from the website.
The Respondent continued to use the Complainant’s official product images including those for the HEETS branded products marking them with the “censured” sign.
At the time of rendering of this administrative decision the website at the disputed domain name was inactive. 5. Parties’ Contentions A. Complainant
The Complainant states that the disputed domain name reproduces its HEETS trademark in its entirety together with the applicable Top-Level Domain (“TLD”) and a generic term “my” and is therefore confusingly similar to the Complainant’s HEETS trademark.
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name and is unable to rely of any of the circumstances set out in paragraphs 4(c)(i), (ii) or (iii) of the Policy.
The Complainant claims that it is evident from the Respondent’s use of the disputed domain name that the he knew of the Complainant’s HEETS trademark when registering the disputed domain name, since he started offering the Complainant’s HEETS products immediately after registering it. However, according to the Complainant the Respondent’s offering of its HEETS products did not meet any requirement set-out by numerous panels for a bona fide offering of goods. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules requires that the Panel’s decision be made “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
It has been a consensus view in UDRP decisions that a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
A complainant must evidence each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely that;
(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. A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, there are two requirements which the Complainant must establish, first that it has rights in a trademark or service mark, and second that the disputed domain name is identical or confusingly similar to the trademark or service mark.
It has been accepted by many UDRP panels that if the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights.
The Complainant produced appropriate evidence that it holds registered rights in the trademark HEETS, and for the purpose of this proceeding, the Panel finds that the Complainant’s International Trademark Registration No. 1326410 for the mark HEETS satisfies the requirement of having trademark rights for the purposes of the Policy.
Having determined that the Complainant has trademark rights in the HEETS mark, the Panel next assessed whether the disputed domain name is identical or confusingly similar to the HEETS trademark of the Complainant.
According to section 1.7 of the WIPO Overview 3.0, the standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.
This test typically involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.
The disputed domain name contains the Complainant’s HEETS trademark in its entirety.
The only elements in the disputed domain name other than the HEETS trademark of the Complainant are the applicable Top-Level Domain (“gTLD”) “.store” and possessive noun, descriptive word “my”.
According to section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.
According to section 1.11.1 of the WIPO Overview 3.0, the applicable generic Top-Level Domain (“gTLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.
On the basis of facts and circumstance discussed above the Panel finds that the disputed domain name is confusingly similar to the HEETS trademark of the Complainant and that the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, a respondent may demonstrate its rights or legitimate interests in a domain name by showing any of the following circumstances, in particular but without limitation:
(i) its use of, or demonstrable preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services;
(ii) it has been commonly known by the domain name;
(iii) it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
In the present case, the Complainant has submitted sufficient and uncontested evidence that it holds well-established rights in the trademark HEETS.
The Complainant has never authorized the Respondent to use its HEETS trademark in any way, and the Complainant’s prior rights in the HEETS trademark precede the date of registration of the disputed domain name.
According to section 2.1 of the WIPO Overview 3.0, while the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent.
As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with the relevant evidence demonstrating rights of legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
The Respondent defaulted and failed to respond, and by doing so failed to offer the Panel any type of evidence set forth in paragraph 4(c) of the Policy, or otherwise counter the Complainant’s prima facie case. The Panel does not find the Respondent’s use of the disputed domain name to be bona fide within the meaning of the Policy.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of factors which, if found by the panel to be present, shall be evidence of registration and use of a domain name in bad faith. This non-exclusive list includes:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Complainant presented undisputed evidence which convinces the Panel that the Respondent has registered and is using the disputed domain name in bad faith.
The fact that the Respondent started offering the Complainant’s HEETS branded products at his alleged online shop immediately after registering the disputed domain name clearly shows that the Respondent knew of the Complainant’s HEETS trademark when registering the disputed domain name.
The Complainant has not licensed or otherwise authorized the Respondent to use any of its trademarks – in relation to this proceeding its HEETS trademark in particular – or to register a domain name incorporating its HEETS trademark.
The online shop that the Respondent operated under the disputed domain name showed no details as to the provider of the website, or acknowledged the Complainant as the HEETS trademark’s true owner. Thus the Internet users might have well been under the impression that it was indeed the Complainant’s website or a website created and operated by an official distributor or reseller of the Complainant, neither of which the Respondent was.
After being formally contacted by the Complainant and requested to refrain from infringing use of the disputed domain name and transfer it to the Complainant, the Respondent included a disclaimer in the website under the disputed domain name stating that he has been forced to remove graphic and text expressions related to the Complainant’s products from the website and included a sign “censured” to all images and brands of the Complainant.
According to section 3.7 of the WIPO Overview 3.0, where the overall circumstances of the case point to the respondent’s bad faith, the mere existence of a disclaimer cannot cure such bad faith. In such cases, panels may consider the respondent’s use of a disclaimer as an admission by the respondent that users may be confused.
In view of this Panel, all the above discussed facts and circumstances support finding that the Respondent has registered and used the disputed domain name with clear intent to take unfair advantage of or otherwise abuse the Complainant’s HEETS trademark. The Respondent’s activity is well within paragraph 4(b)(iv) of the Policy and the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied. 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, be transferred to the Complainant.
Zoltán Takács
Sole Panelist
Date: November 17, 2017
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