The Complainant is Philip Morris Products S.A. of Neuchâtel, Switzerland, represented by Boehmert & Boehmert, Germany.
The Respondents are Contact Privacy Inc. Customer 0150128648 of Toronto, Ontario, Canada / Chen Yu Chen, HeatShopUSA of San Gabriel, California, United States of America (“United States”), internally-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 19, 2018. On March 19, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 19, 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 20, 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 21, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 10, 2018. After a request from the Respondent, the Center extended the due date for the Response to April 14, 2018, in accordance with paragraph 5(b) of the Rules. The Respondent did not submit any response. Accordingly, the Center notified the Commencement of Panel Appointment Process on April 16, 2018.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on April 24, 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 a Swiss company and is part of the Philip Morris International (“PMI”) group of companies which are engaged in the production of tobacco products including cigarettes and tobacco aerosol devices. One of the latter products produced by the Complainant has been branded IQOS and is a heating device into which a tobacco product also produced by the Complainant branded HEETS or HEATSTICKS is inserted to deliver a nicotine-containing aerosol. The Complainant’s group launched IQOS in 2014 and distributes it exclusively through its official stores and websites.
The Complainant owns a portfolio of registered trademarks representing the above brands including, for example, the United States registered trademark No. 4758618 for the word mark HEATSTICKS registered on June 23, 2015; International registered trademark No. 1326410 for the word mark HEETS registered on July 19, 2016 and designated for a variety of countries and territories including the United States; and United States registered trademark No. 4763090 for the word mark IQOS registered on June 30, 2015.
The disputed domain name was created on December 14, 2017. There is no information available regarding the Respondent or its activities with the exception of the website associated with the disputed domain name which features an alleged online shop offering IQOS branded products for sale which may or may not be genuine products manufactured by the Complainant. Such products are offered alongside competing accessories of other commercial origin including leather holder cases which are not manufactured, endorsed or otherwise approved by the Complainant.
The website associated with the disputed domain name does not show any details regarding the identity of its publisher. Below a full page of marketing various products, the website features a disclaimer noting that all product and company names are trademarks or registered trademarks of their owners, acknowledging various registered marks of the Complainant and stating “Heat Shop USA is not endorsed nor affiliated with PMI”. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Complainant asserts that the disputed domain name adopts the indicative part of the Complainant’s HEATSTICKS trademark, noting that the term “heats” or “heat” is not commonly used to describe cigarettes or other cylindrical shaped heated tobacco products. The Complainant also notes that the term “heat” in the disputed domain name is followed by the letter “s” thus rendering it phonetically similar or identical to the Complainant’s HEETS trademark and that the disputed domain name may serve to divert traffic from the Complainant as the result of a misspelling of such mark. The Complainant notes that it is also well established that 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 and adds that the website content in the present case shows that the Respondent has been targeting the Complainant’s trademarks. The Complainant submits that when visiting a website provided under the disputed domain name a legal age smoker will reasonably expect to find a website commercially linked to the owner of the HEETS and HEATSTICKS trademark.
The Complainant asserts that it has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register a domain name incorporating or which will be associated with its HEATSTICKS or HEETS trademarks. The Complainant submits that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to intentionally mislead and divert consumers or to tarnish the trademarks of the Complainant. The Complainant contends that the Respondent is not an authorized reseller of the IQOS product, that such product is not marketed or sold by the Complainant in the United States, and that HEATSTICKS and HEETS products are not currently sold in the United States given that they are the subject of a Pre-Market Tobacco Application to the US Food and Drug Administration. The Complainant adds that 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.
The Complainant contends that a reseller or distributor can be making a bona fide offering of goods or services and thus have a legitimate interest in a domain name only if certain requirements are met, citing Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. With regard to the requirements put forward in that case, the Complainant states that the Respondent is offering the Complainant’s products alongside competing accessories of other commercial origin, adding that this in itself is sufficient to exclude a legitimate interest on the basis of a bona fide offering of goods. The Complainant notes that the use of a domain name cannot be fair if it suggests affiliation with the trademark owner and asserts that the disputed domain name in itself suggests at least an affiliation with the Complainant and its trademarks. The Complainant states that the website does not reveal the identity of its publisher but leaves users under the false impression that it is provided by the Complainant, one of its affiliates or one of its official dealers.
The Complainant contends that the disclaimer provided on the Respondent’s website is not relevant because the Respondent is offering competing products alongside those of the Complainant. However, the Complainant also notes that the disclaimer is not presented in a clear and sufficiently prominent manner but is positioned at the bottom of the website after a full page of marketing the Complainant’s IQOS trademark whereby users might order products in the online shop without recognizing it. The Complainant submits that the fact that the shop is not endorsed nor affiliated with the Complainant’s group is hidden in the middle of the long and complicated text of the disclaimer such that it is unlikely to be fully reviewed even if it is stumbled upon by the user.
The Complainant states that it is evident from the Respondent’s use of the disputed domain name in connection with the Complainant’s IQOS branded product immediately after registration that the Respondent knew of the Complainant’s HEATSTICKS and HEETS trademarks when registering the disputed domain name. The Complainant asserts that it is beyond the realm of reasonable coincidence that the Respondent chose the disputed domain name without the intention of invoking a misleading association with the Complainant in light of the fact that the term “heat” is not associated with a specific kind of product.
The Complainant asserts that it is also evident from the Respondent’s use of the disputed domain name that the Respondent registered and used it with the intention to attract, for commercial gain, Internet users to the associated website by creating a likelihood of confusion with the Complainant’s HEATSTICKS and HEETS trademarks as to the source, sponsorship, affiliation, or endorsement of such website or of a product or service on such website, thus constituting registration and use in bad faith pursuant to paragraph 4(b)(iv) of the Policy. The Complainant contends that by reproducing the Complainant’s trademarks in the disputed domain name and on the Respondent’s website, the Respondent suggests in bad faith that the Complainant or an authorized affiliate is its source and by using the disputed domain name in connection with competing accessories, the Respondent uses the disputed domain name in bad faith for commercial gain to divert users assuming such website to be an official online shop, purportedly endorsed by the Complainant. Finally, the Complainant concludes that it is well established that the fact that the Respondent was using a privacy protection service to conceal 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
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(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
The Complainant has proved to the satisfaction of the Panel that it has rights in the trademarks HEATSTICKS and HEETS by virtue of its registered trademarks as noted in the factual background section above. Panels under the Policy may find confusing similarity in terms of paragraph 4(a)(i) of the Policy where a domain name incorporates the entirety of a trademark or where at least a dominant feature of the relevant mark is recognizable in the 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 the present case, the Panel notes that the initial and thus dominant element “heat” of the Complainant’s HEATSTICKS trademark is incorporated as the first element in the disputed domain name. Furthermore, the Complainant’s HEETS trademark is both alphanumerically and aurally very similar to the first few letters of the disputed domain name.
The Panel also accepts the Complainant’s assertion that website content can be considered in order to assess confusing similarity. Such content may support a finding of confusing similarity where, as here, it appears that the Respondent registered the domain name precisely because it believed that the disputed domain name was confusingly similar to a mark held by the Complainant (see section 1.7 of the WIPO Overview 3.0). In the present case, the widespread use of the Complainant’s IQOS mark on the website associated with the disputed domain name relative to products similar to those produced by the Complainant tends to support the proposition that the Respondent selected the term “heat” as part of the disputed domain name entirely because of the connection and confusing similarity between that term and the Complainant’s HEATSTICKS and HEETS marks, particularly where the words “heat” and “shop” are not normally juxtaposed in ordinary usage.
Neither the generic Top-Level Domain (“gTLD”) “.com” which is merely required for technical reasons nor the words “shop” or “usa” which suggest a generic or geographic connotation respectively are of significance to the present assessment of confusing similarity (see section 1.8 of the WIPO Overview 3.0).
In all of these circumstances, the Panel finds that the disputed domain name is confusingly similar to a mark in which the Complainant has rights and accordingly that the requirements of paragraph 4(a)(i) of the Policy have been satisfied. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in a domain name. Where the panel finds that a complainant has made out such a prima facie case, the burden of production shifts to the respondent to bring forward evidence of such rights or legitimate interests.
In the present case, the Panel is satisfied that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has asserted that it did not license or permit the Respondent to use its HEATSTICKS or HEETS trademarks or any variant. It is clear that a specific commercial use is being made of the disputed domain name in connection with the sale of products which may or may not be those manufactured by the Complainant alongside third party products such that the Respondent could not argue that it has a noncommercial purpose. Similarly, the Panel accepts the Complainant’s argument that the Respondent could not fulfil the test put forward in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 in connection with any allegation that the Respondent is a reseller or distributor and is making a bona fide offering of goods or services given that the Respondent is offering competing accessories of other commercial origin than the Complainant alongside what may or may not be products manufactured by the Complainant. Finally, the Panel accepts the Complainant’s contentions relative to the disclaimer on the website associated with the disputed domain name in that this would not in and of itself provide support for any claim to rights and legitimate interests in the disputed domain name given the manner in which the associated website is being used in connection with third party product. In any event, the disclaimer is insufficiently prominent to provide any assurance that users would see it before ordering products from the Respondent’s online shop.
In all of these circumstances, the burden of production shifts to the Respondent to bring forward evidence of any rights or legitimate interests which it might claim in respect of the disputed domain name. The Respondent has not filed any Response to the Complaint and thus has not provided any submissions or evidence for the Panel to consider on this topic. The Panel is therefore satisfied that the Complainant’s case calls for a response and that the Respondent has failed to answer such call. Furthermore, the Panel has not independently identified a potential case or response which the Respondent might have made to the Complainant’s contentions. The present use of the disputed domain name in the Panel’s view cannot confer any rights or legitimate interests in respect of the disputed domain name upon the Respondent.
Accordingly, the Panel finds that the Respondent has failed to rebut the Complainant’s prima facie case on rights and legitimate interests and therefore that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(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”.
It is widely accepted among UDRP panels that for bad faith registration and use to be made out there must be a degree of targeting of the Complainant or its mark, or at the very least that the Respondent must have had the Complainant or its trademark in mind when selecting the disputed domain name (The Perfect Potion v. Domain Administrator,WIPO Case No. D2004-0743).
In the present case, the Panel finds that the Respondent was intent on targeting the Complainant’s mark due to the presence on the Respondent’s website of what is either the Complainant’s IQOS branded product, or an imitation thereof, together with third party product of unknown commercial origin. The disputed domain name, featuring the word “heat” which is confusingly similar to the Complainant’s HEATSTICKS and HEETS marks, points to such website. Furthermore, the presence of the disclaimer on such website, while insufficiently prominent and inadequate to cure any indications of bad faith, also leads to the same inference of knowledge of the Complainant’s rights given that it shows an awareness of the Complainant’s identity and trademarks (on this subject, see section 3.7 of the WIPO Overview 3.0). In conclusion, it is evident that the Respondent sought either to misrepresent itself as the Complainant or to create a false impression that the Respondent’s website was associated with or endorsed by the Complainant.
In these circumstances, the Panel finds that the Respondent intentionally registered the disputed domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of such website and consequently that the disputed domain name has been registered and is being used in bad faith pursuant to paragraph 4(b)(iv) of the Policy. Accordingly, the requirements of paragraph 4(a)(iii) of the Policy have been 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.
Andrew D. S. Lothian
Sole Panelist
Date: May 7, 2018
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