The Complainant is Philip Morris Products S.A. of Neuchâtel, Switzerland, represented by Boehmert & Boehmert, Germany.
The Respondent is Domain Admin, Privacy Protect, LLC (PrivacyP) of Burlington, Massachusetts, United States of America / Igor Krahotkin of Rostov-na-Donu, Russian Federation, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 8, 2018. On March 9, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 10, 2018, 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 March 18, 2018 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 March 20, 2018.
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 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 March 23, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 12, 2018.
The Center received three communications from the Respondent before commencement of the proceedings on March 18, 2018, March 19, 2018 and March 21, 2018, respectively. The Center received a further communication from the Respondent on April 16, 2018.
The Center appointed Angela Fox as the sole panelist in this matter on May 1, 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 part of the group of companies affiliated to Philip Morris International Inc. (jointly referred to as “PMI”). PMI is a leading international tobacco company, with products sold in approximately
180 countries, including well-known brands like Marlboro.
In the course of transforming its business from combustible cigarettes to (so-called within the tobacco industry) Reduced Risk Products (or “RRPs”), PMI has developed a new product, namely a precisely controlled heating device into which a specially designed tobacco product is inserted and heated to generate a flavorful nicotine-containing aerosol. The device itself is marketed under the brand name Iqos, while the tobacco inserts are branded “Heets” or “HeatSticks”. The IQOS product was first introduced in Japan in 2014, and is now available in some 38 markets across the world.
The Complainant is the proprietor of the following trademark registration, details of which were annexed to the Complaint:
International Registration No. 1217386 for HEATSTICKS, registered on July 21, 2014 designating among others the European Union.
The disputed domain name was registered on November 22, 2017. It is in use for an online shop purporting to offer the Complainant’s Iqos and HeatSticks branded products. The online shop uses the Complainant’s HEATSTICKS trademark and also prominently features the Complainant’s Iqos brand in the stylized form and colours used by the Complainant and the Complainant’s related “hummingbird” logo, also used and registered by the Complainant.
The Respondent’s website also appears to have copied over official marketing material from the PMI website.
The website for the Respondent’s online shop includes a small disclaimer at the bottom of the website next to a copyright notice, stating “This is not the website of PMI”. 5. Parties’ Contentions A. Complainant
The Complainant submits that the disputed domain is confusingly similar to the HEATSTICKS trademark, in which it has rights. It differs from the Complainant’s trademark only by the inclusion of a hyphen and the addition of the non-descriptive new generic Top-Level Domain (“gTLD”) suffix “.shop”, which in the context of the Complainant’s goods is descriptive of an online location where the Complainant’s goods can be bought and likely to reinforce the confusing similarity between the disputed domain name and trademark.
The Complainant further submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not a licensee of the Complainant, nor has it been otherwise allowed by the Complainant to make use of the Complainant’s trademark. The Complainant states that it does not know whether the Respondent has been selling the Complainant’s genuine goods through the website, but avers that such activities, if they are being made, do not amount to a bona fide offering of goods, since the Respondent appears to have designed its website so as to mislead visitors into thinking that it was a website of PMI. The Complainant notes in this regard that the disclaimer on the website is in very small print and that its use of the Complainant’s branding and official marketing materials are likely to create the overall impression that the website is that of or connected to PMI.
Finally, the Complainant submits that the disputed domain name was registered and has been used in bad faith. The Complainant submits that the Respondent chose the disputed domain name in order to deliberately cause confusion among Internet users as to the source of the goods sold through its website in order to take unfair advantage of the Complainant’s reputation. B. Respondent
The Respondent contends that he acquired the disputed domain name legally, and that the term “heat sticks” cannot be regarded as intellectual property as it is merely a combination of two words. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the panel finds that:
(i) the 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 the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy. A. Identical or Confusingly Similar
The Complainant has proved that it has rights in the trademark HEATSTICKS. The disputed domain name contains the Complainant’s trademark in its entirety, albeit in a hyphenated form. This is a minor difference that is unlikely to be noted by Internet users.
The Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
As noted by numerous prior panels, once a complainant has made a prima facie showing that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut that (see among others The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064 and section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (hereinafter “WIPO Overview 3.0”).
In this case, the Respondent is not a licensee of the Complainant, nor has the Complainant authorized the Respondent to use the HEATSTICKS trademark. The use that the Respondent has made of the domain name appears to have been deliberately intended to misrepresent the Respondent’s website as that of the Complainant.
The Complainant acknowledges that the Respondent appears to be selling goods which may be genuine goods of the Complainant. However, the Complainant also rightly notes that a reseller or distributor must meet certain criteria if its use of a disputed domain name for a resale site is to be regarded as a bona fide offering of goods capable of conferring a legitimate interest in the domain name (Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903). These include:
- the respondent must actually be offering the goods or services at issue;
- the respondent must use the site to sell only the trademarked goods;
- the site itself must accurately disclose the respondent’s relationship with the trademark owner; and
- the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.
Moreover, the use of a domain name by a reseller or distributor cannot be “fair” if it falsely suggests an affiliation with the trademark owner (see AB Electrolux v. Handi Sofian, Service Electrolux Lampung,WIPO Case No. D2016-2416).
The disputed domain name also contains the non-distinctive gTLD “.shop”, which serves to suggest that HEATSTICKS branded goods can be bought at a website linked to the domain name. In the context of the Complainant’s HEATSTICKS branded goods, the presence of the word “.shop” in the domain name suffix is directly descriptive of activities the Complainant carries out under the HEATSTICKS trademark. It therefore reinforces the appearance of a connection between the disputed domain name and the Complainant’s trademark.
In this case, it is clear that the website linked to the disputed domain name suggests an affiliation with the Complainant. This arises from the Respondent’s prominent use of the Complainant’s branding, logos and colours, as well as the wholesale lifting of official marketing wording from PMI’s website. The top of the home page depicts the Complainant’s IQOS brand and hummingbird logo in the place where a visitor would normally expect to see the on-line shop name, which lends further strength to the likely erroneous conclusion that this is in fact the Complainant’s site. The disclaimer is so small, and positioned in such a way, that most visitors to the site are unlikely to notice it, and nowhere does the site explain the relationship between the Respondent and the Complainant.
In regard of the Respondent’s allegation that “heat sticks” is a common phrase, past UDRP panels have held that merely registering a domain name comprised of a dictionary word or phrase does not by itself automatically confer rights or legitimate interests on the respondent. See WIPO Overview 3.0, section 2.10.1. As indicated above, the Respondent is apparently using the term “heat sticks” for the disputed domain name to reflect the Complainant’s trademark rather than in connection with its dictionary meaning.
In light of all this, the Panel is satisfied that the Respondent’s use does not give rise to rights or legitimate interests in the domain name. The Complainant succeeds under the second arm of the test. C. Registered and Used in Bad Faith
The Respondent appears to have chosen the disputed domain name in order to deliberately attract Internet users to its website in the mistaken belief that it was the website of the Complainant, or otherwise linked to or authorized by the Complainant. That impression is only reinforced by the content of the Respondent’s site. As such, the Panel is satisfied that by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of the products on its website. Under paragraph 4(b)(iv) of the Policy, this circumstance shall be evidence of the registration and use of a domain name in bad faith.
The Panel concludes that the disputed 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 disputed domain name be transferred to the Complainant.
Angela Fox
Sole Panelist
Date: June 14, 2018
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