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, self-represented. 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 December 15, 2017. On December 15, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 18, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing his 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 December 20, 2017. In accordance with the Rules, paragraph 5, the due date for filing a Response was January 9, 2018. On January 8, 2018, the Respondent requested an automatic four calendar day extension of the deadline to file a Response. The Center granted the requested extension and confirmed that the new deadline for Response was January 13, 2018. The Response was filed with the Center on January 12, 2018.
The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on January 23, 2018. 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., a tobacco company from Switzerland.
The Complainant is the owner of the following trademark registrations, among others:
Trademark
Registration Number
Registration Date
Jurisdiction
HEATSTICKS
1217386
July 21, 2014
International trademark registration.
Albania, Armenia, Bosnia and Herzegovina, Bahrain, Belarus, Colombia, Algeria, Egypt, European Union, Georgia, Israel, India, Iceland, Kyrgyzstan, Kazakhstan, Morocco, Monaco, Moldova, Montenegro, the former Yugoslav Republic of Macedonia, New Zealand, Oman, Philippines, Serbia, Tunisia, Turkey, Ukraine, Viet Nam
HEETS
1326410
July 19, 2016
International trademark registration.
Albania, Armenia, Australia, Azerbaijan, Bosnia and Herzegovina, Bahrain, Botswana, Belarus, China, Colombia, Algeria, Egypt, European Union, Georgia, Israel, Iceland, Japan, Kenya, Kyrgyzstan, Republic of Korea, Liechtenstein, Morocco, Monaco, Moldova, Montenegro, the former Yugoslav Republic of Macedonia, Mexico, Mozambique, Norway, New Zealand, African Trademark (OAPI), Oman, Philippines, Serbia, Russian Federation, Singapore, Turkmenistan, Turkey, Ukraine, United States of America, Uzbekistan, Viet Nam
The Respondent, Michal Kovrzek, registered the disputed domain name on October 2, 2017, which is used to operate an online shop allegedly offering the Complainant's products. 5. Parties' Contentions A. Complainant
The Complainant argues the following:
i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
That the disputed domain name adopts a predominant part of the trademark HEATSTICKS of the Complainant, replacing the second part, "sticks" with the term "cigarettes".
That there is a phonetic similarity between the first part of the disputed domain name, "heat" and the trademark HEETS of the Complainant.
That the generic Top-Level Domain ("gTLD") ".store" is a standard registration requirement and should be disregarded in the confusing similarity test presented by the first element of the Policy.
That the addition of the gTLD ".store" to the disputed domain name, together with the use of the term "heatcigarettes", reinforces the association of the disputed domain name to the Complainant's HEATSTICKS trademark.
ii) The Respondent has no rights to or legitimate interests in the disputed domain name.
That the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register a domain name incorporating the trademarks HEATSTICKS or HEETS.
That the Respondent is not making a legitimate, noncommercial or fair use of the disputed domain name.
That the Respondent is not an authorized reseller of the HEETS and HEATSTICKS branded products.
That the website to which the disputed domain name resolves does not meet the requirements set out by previous panel decisions to be considered a bona fide offering of goods.
That upon receiving a cease and desist letter from the Complainant, the Respondent immediately modified the content of his website. That any amendments made by the Respondent in reaction to a Complaint or a cease-and-desist letter cannot remedy a prior bad faith conduct.
That the Respondent prominently displays the Complainant's registered trademarks and slogans on his website, without specifying who they belong to.
That the disclaimer shown on the website to which the disputed domain name resolves does not clarify the Respondent's relationship with the Complainant.
iii) The disputed domain name was registered and is being used in bad faith.
That the Respondent knew of the Complainant and its trademarks when registering the disputed domain name. That the Respondent started using the disputed domain name to offer HEETS and HEATSTICKS branded products, immediately after registration.
That the Respondent registered the disputed domain name with the intention to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the trademarks HEATSTICKS and HEETS of the Complainant as to the source, sponsorship, affiliation, or endorsement of his website.
That by replicating the dominant feature of the trademark HEATSTICKS of the Complainant in the disputed domain name, and prominently displaying the Complainant's official products, trademarks and slogan, the Respondent suggests that he is associated to the Complainant.
That the Respondent has been involved in another case under the Policy, in which he has replicated the trademark HEETS of the Complainant. B. Respondent
The Respondent argues the following:
i) The disputed domain name is not identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
That the trademark HEATSTICKS of the Complainant is formed by two generic words.
That the Complainant's trademarks, HEETS and HEATSTICKS, are not registered or protected in the European Union.
That the Complainant does not hold any right to the generic word "heat". That the Complainant is not known by the word "heat". That the Complainant has no monopoly over the use of the words "heat" or "cigarettes".
That the Respondent is involved in the sale of cigarettes and related products. That the use of the disputed domain name is a part of the Respondent's business strategy.
ii) The Respondent has rights to or legitimate interests in the disputed domain name.
That the disputed domain name does not create the impression of an association between him and the trademarks of the Complainant.
That the Complainant's claims regarding the content of the website to which the disputed domain name resolves are not subject to this procedure.
That the website to which the disputed domain name resolves, displays a statement that makes it clear that he is not an official distributor of the Complainant, or his products.
iii) The disputed domain name was not registered and is not being used in bad faith.
That the Complainant did not prove that the Respondent had knowledge of the trademarks HEATSTICKS and HEETS when registering the disputed domain name.
That the website to which the disputed domain name resolves, does not suggest that the Respondent is an affiliated dealer of the Complainant. 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant is required to prove that each of the three following elements is satisfied:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants 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 was registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has proven to be the owner of a portfolio of trademark registrations for HEATSTICKS and HEETS throughout the world, including European registrations. Considering that the Czech Republic is a member of the European Union, the Complainant's trademarks were protected in the jurisdiction where the Respondent claims to be domiciled, at the time of registration of the disputed domain name.
Paragraph 4(a)(i) of the Policy allows for Panels to find confusing similarity in cases where a dominant feature of the relevant trademark is recognizable in 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")). In this case, the disputed domain name entirely incorporates the feature "heat" of the trademark HEATSTICKS of the Complainant.
The Complainant's trademark HEETS is also phonetically similar and thus confusingly similar to the disputed domain name .
The Respondent claims that the disputed domain name is comprised of two generic words: "heat" and "cigarettes", and that therefore said domain name is not confusingly similar to the Complainant's trademarks. However, the trademark HEATSTICKS is used for branded disposable tobacco products, which are similar to cigarettes.
Moreover, the content of a website associated to a domain name can confirm confusing similarity when there is prima facie evidence showing that a respondent is targeting a trademark through the disputed domain name (see section 1.14 of the WIPO Overview 3.0). In this case, the content of the website to which the disputed domain name resolves shows that the Respondent has been targeting the trademarks HEATSTICKS and HEETS of the Complainant (see Bayerische Motoren Werke AG ("BMW") v. Registration Private, Domains By Proxy, LLC / Armands Piebalgs,WIPO Case No. D2017-0156).
The addition of the new gTLD ".store" holds no legal relevance to this case, as it does not diminish the confusing similarity between the trademarks HEATSTICKS and HEETS, and the disputed domain name (see SAP SE v. Mohammed Aziz Sheikh, Sapteq Global Consulting Services,WIPO Case No. D2015-0565; Diageo p.l.c. v. John Zuccarini,WIPO Case No. D2000-0541; and Bentley Motors Limited v. Domain Admin / Kyle Rocheleau, Privacy Hero Inc.,WIPO Case No. D2014-1919).
The first element of the Policy has been fulfilled. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets forth the following examples as circumstances where a respondent may have rights to or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the 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 domain name, even if you have acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Complainant argues that it has not authorized the Respondent to use any of its trademarks HEATSTICKS or HEETS, or to register a domain name incorporating said trademarks. The Respondent did not contend this assertion.
As shown in Annex 6 of the Complaint, the website to which the disputed domain name resolves, predominantly displays the Complainant's HEETS and IQOS trademarks, including their logos, in relation to offers to sell and deliver products related to said marks.
The Respondent claims that his use of the disputed domain name is part of a business strategy to sell cigarettes and related products. The sale of goods or services related to a third-party owned trademark does not automatically grant the respondent the right to register and use a domain name containing or otherwise emulating a trademark (see Ullfrottè AB v. Bollnas Imports,WIPO Case No. D2000-1176; and Volvo Trademark Holding AB v. Peter Lambe,WIPO Case No. D2001-1292).
The Respondent argues that the disclaimer displayed on his website makes it clear that he is not an official distributor of the Complainant's products. The Complainant contends that the disclaimer shown on the Respondent's website is insufficient to clarify the fact that there is no association between the Respondent and the Complainant.
According to section 3.7 of the WIPO Overview 3.0, disclaimers have to be posted in a clear and sufficiently prominent manner. Previous panels appointed under the Policy have addressed the sufficiency of disclaimers to effectively disclose the relationship existing between the operator of a website, and the trademark owner. Consequently, it is important to analyze the content, size, context, and location of the disclaimer in question (see Pliva, Inc. v. Eric Kaiser,WIPO Case No. D2003-0316: "Nevertheless, on the home page itself, the disclaimer is still below the place where a customer would click to order Respondent's product. There are at least two reasons why this disclaimer is not effective. First, it comes after a full page of marketing where the "Antabuse" name appears many times. Second, the disclaimer appears only towards the bottom of the home page, after the customer's ordering option"; Dr. Ing. h.c. F. Porsche AG v. Sabatino Andreoni,WIPO Case No. D2003-0224: "In this case, the disclaimer - which is in a rather small typeface, states that Andreoni is not affiliated with the Complainant. However, the website under the disputed domain names also states "A displays high resolution Porsche pictures. A new Porsche picture, wallpaper and screensaver could be added soon," indicating at least that the Complainant has endorsed the use of the disputed domain names, the Porsche trademarks and images"; and Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Telephone Island,WIPO Case No. D2004-0711: "Turning to the disclaimer, the Panel finds that Respondent's disclaimer is not sufficient to form an effective defence. The disclaimer is to be found towards the bottom of the home page, itself, but nevertheless, the disclaimer is still below the place where a customer would click to order Respondent's products and is not perceptible immediately by the public. Said disclaimer is not effective").
The disclaimer in this case is situated at the farthest bottom of the Respondent's home webpage, underneath multiple offers of the products associated to the Complainant's trademarks and most notably, after the section of the site where users are required to pay for the products sold therein. The wording of said disclaimer is vague and imprecise:
"We sell original Philip Morris product which are bought for you in the PMI distribution network.
HeatCigarettes.Store - This is not the website of PMI."
This disclaimer is ineffective, and does not provide the basis for any rights to, or legitimate interests in the disputed domain name.
The second element of the Policy has been fulfilled. C. Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the respondent has registered or the respondent has 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 the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the respondent's website or location or of a product or service on its website or location.
The Complainant has proven to be the owner of a portfolio of trademark registrations for HEATSTICKS and HEETS throughout the world, comprising European registrations. Considering that the Czech Republic is a member of the European Union, the Complainant's trademarks are protected in the jurisdiction where the Respondent claims to be domiciled.
The Respondent alleges that the Complainant did not prove that he had knowledge of the Complainant and its trademarks HEETS and HEATSTICKS, when registering the disputed domain name. This is not true. At the time of registration of the disputed domain name, the Respondent had already been notified by the Center of a complaint filed against him in Philip Morris Products S.A. v. Michal Kovrzek,WIPO Case No. D2017-1781, on September 29, 2017. Three days after having been notified of said complaint, the Respondent registered the disputed domain name, and linked it to a webpage that incorporates the trademarks of the Complainant, and that contains offers to sell products that are similar to those of the Complainant. In Philip Morris Products v. Kovrzek (supra), the Panel stated: "[t]he fact that the Respondent started offering the Complainant's HEETS branded products at his alleged on line 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". In the case at hand, the Respondent carried out the same conduct that was described by the panel that decided Philip Morris Products v. Kovrzek (supra), with the aggravating factor that in the present case he did it after having formally been notified of the Complainant's trademark rights, and claims.
The Respondent was well aware of the existence of the Complainant and its trademarks when registering the disputed domain name. In Philip Morris Products v. Kovrzek (supra), the Respondent was found to have knowingly registered the domain name , which is confusingly similar to the Complainant's trademark HEETS. In both cases, the Respondent linked his domain names to websites that prominently displayed the trademarks HEATSTICKS, IQOS and HEETS of the Complainant, and offered products that belong to the category of those sold by the Complainant. Therefore, it is reasonable to infer that the Respondent registered the disputed domain name with full knowledge of the existence of the trademarks HEATSTICKS, IQOS and HEETS of the Complainant. This conduct constitutes bad faith according to previous cases decided under the Policy (see Façonnable SAS v. Names4sale,WIPO Case No. D2001-1365; and The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113).
The disclaimer displayed at the bottom of the Respondent's webpage is not only artificial in the Panel's opinion, but seems to have been specifically tailored to avoid a bad faith finding, in an effort to take advantage of a mere formalistic, decontextualized interpretation of the Policy. Where the overall circumstances of a case point to the Respondent's bad faith, the mere existence of a disclaimer cannot cure such bad faith (see section 3.7 of the WIPO Overview 3.0; and, inter alia, Pliva, Inc., supra; Dr. Ing. h.c. F. Porsche AG, supra;and Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation, supra).
In light of the above, it is fair to conclude that the Respondent engaged in an effort to misrepresent itself as the Complainant (see Jupiter Investment Management Group Limited v. N/A, Robert Johnson,WIPO Case No. D2010-0260), and/or to create the impression amongst Internet users that the website to which the disputed domain name resolves is related to, associated with, or endorsed by the Complainant. It misleads the public as to the source of the page, and its content (see paragraph 4(b)(iv) of the Policy, LeSportsac, Inc. v. Yang Zhi,WIPO Case No. D2013-0482, and trivago GmbH v. Whois Agent, Whois Privacy Protection Service, Inc. / Alberto Lopez Fernandez, Alberto Lopez, WIPO Case No. D2014-0365).
The third element of the Policy has been fulfilled. 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.
Kiyoshi Tsuru
Sole Panelist
Date: February 11, 2017
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