The Complainant is Philip Morris Products S.A. of Neuchâtel, Switzerland, represented by Boehmert & Boehmert, Germany.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America (“United States”) / Tony Mak of San Francisco, California, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (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 20, 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 22, 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 23, 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 27, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 16, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 18, 2018.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on May 3, 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 which is part of the Philip Morris International (“PMI”) group of companies. The group is engaged in the production of tobacco products including combustible cigarettes and tobacco aerosol devices. One of the latter products of the Complainant is branded IQOS. This is a heating device into which a specially designed 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 product is available in key cities in around 38 markets worldwide.
The Complainant owns a portfolio of registered trademarks representing the above brands including, for example, 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 Complainant also owns European Union registered trademark No. 13172581 for the word mark HEAT NOT BURN TECHNOLOGY registered on July 25, 2016.
The disputed domain name was created on September 11, 2017. There is minimal 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 what may or may not be genuine versions of the Complainant’s IQOS and HEATSTICKS branded products for sale. Such products are offered alongside competing tobacco products and accessories of other commercial origin which are not manufactured, endorsed or otherwise approved by the Complainant. The Complainant notes that although the said website purports to supply United States consumers, neither the competing tobacco products nor those which bear the Complainant’s trademarks have yet received regulatory approval for commercialization in the United States.
The website associated with the disputed domain name does not show any details regarding the identity of its publisher. It contains an “About us” section which uses the Complainant’s HEAT NOT BURN TECHNOLOGY trademark and states that it is the premier third party worldwide supplier of such products. 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 “myHeatShop 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 term HEAT of the Complainant’s HEATSTICKS trademark, positioned in the middle of the descriptive terms “my” and “shop”. The Complainant notes that the term “heats” or “heat” is not commonly used to describe cigarettes or other cylindrical shaped heated tobacco products. The Complainant adds that the term “heat” in the disputed domain name is used to indicate the type or nature of the products offered in the associated online shop. The Complainant also notes that the term “heat” in the disputed domain name is followed by the letter “s” of the descriptive term “shop” 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 asserts 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 misleadingly divert consumers or tarnish the trademarks of the Complainant. The Complainant contends that the Respondent is not an authorized reseller of the HEATSTICKS and HEETS products and that such products are not marketed or sold by the Complainant 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 a large variety of competing tobacco products and 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 notes that the reference in the “About us” section of the website is another reference to a trademark of the Complainant, thus suggesting a commercial affiliation between the Parties. 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 as it is not presented in a clear and sufficiently prominent manner and does not effectively disclose the relationship between the website operator and the Complainant in its capacity as the trademark owner. The Complainant adds that it is important to analyze the content, size, context and location of the disclaimer in question. The Complainant goes on to note that the disclaimer is positioned at the bottom of the website after a full page of marketing the Complainant’s IQOS and HEATSTICKS trademarks 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 at the end of the long 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 commonly used to indicate 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 in reproducing the Complainant’s trademarks in the disputed domain name and on the Respondent’s website, the Respondent suggests that the Complainant or an affiliated dealer is the source of such site. The Complainant adds that by using the disputed domain name in connection with competing accessories, the Respondent uses it in bad faith for commercial gain to divert users who will assume such website to be an official online shop, purportedly endorsed by the Complainant. The Complainant asserts 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.
Finally, the Complainant notes that the Respondent was also the respondent in Philip Morris Products S.A. v. Tony Mak,WIPO Case No. D2017-1623, in respect of which the disputed domain name was , adding that a finding of registration and use in bad faith was made against the Respondent in that case and that transfer was ordered. The complaint in that case was notified to the Respondent on August 30, 2017 and the Respondent created the disputed domain name some 12 days later. The Complainant contends that and the disputed domain name constitute a pattern of bad faith registration and use of domain names by the Respondent. 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 Panel is satisfied from the evidence put forward by the Complainant 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 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 second element in the disputed domain name after the word “my” which, being the possessive form, serves to place the reader’s focus on to such second element. Furthermore, the Complainant’s HEETS trademark is alphanumerically very similar to the letters “heats” which, with the exception of the third letter, appear identically and in the same order in the disputed domain name. Such mark is also aurally very similar to the “heat” element in the disputed domain name.
The Panel 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 Respondent’s website features the widespread use of the Complainant’s IQOS mark, the use of the word “sticks” as a menu item corresponding to an element of the Complainant’s HEATSTICKS mark and a large number of images bearing the Complainant’s branding. The website also features products similar to those produced by the Complainant. This tends to support the Complainant’s 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 “my”, “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 “my” or “shop” which are merely generic and descriptive are of any 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.
The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name based on its assertions that it did not license or permit the Respondent to use its HEATSTICKS or HEETS trademarks or a domain name associated therewith. It is not open to the Respondent to argue that it is making a noncommercial use of the disputed domain name in consequence of the presence of the online shop at the corresponding website. Given the offer for sale of third party goods of unknown commercial origin on the Respondent’s website, the Panel agrees with the Complainant that the Respondent would be unable to avail itself of the safe harbor to be found in the case of Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 on the basis that it is a reseller or distributor which is making a bona fide offering of goods or services. The Panel accepts the Complainant’s submissions relative to the disclaimer on the Respondent’s website which is insufficiently prominent to provide any assurance that users would see it before ordering products from the Respondent’s online shop.
As the Complainant has made out the requisite prima facie case, 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 failed to file a Response in this case and therefore has not placed any evidence or submissions before the Panel which might have demonstrated such rights or legitimate interests, nor can the Panel identify any likely way in which the Respondent would have been able to answer the Complainant’s case on this topic, particularly given the use of the disputed domain name to sell third party products along with products featuring the Complainant’s trademarks. In these circumstances, 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). Such targeting is evident in the present case by virtue of the use of the disputed domain name to sell third party products along with products which may or may not be official products of the Complainant but which evidently feature its registered marks.
It is clear to the Panel from the nature of the associated website that the use of the word “heat” in the disputed domain name is not intended to be an ordinary or dictionary word use of the term but was a specific reference to the Complainant’s HEATSTICKS and HEETS marks. Such reference misrepresented the Respondent as the Complainant or created a false impression that the website was associated with or endorsed by the Complainant. Registration and use of the disputed domain name for this purpose could not be considered to be in good faith.
The Panel notes that the Respondent provided a disclaimer on its website but considers that this cannot cure the Respondent’s bad faith arising from the targeting of the Complainant’s marks in connection with the sale of third party products, nor is such disclaimer sufficiently prominent to dispel any confusion which would arise based on the apparent endorsement of the Respondent’s offering which arises from the presence of the Complainant’s trademarks. Such disclaimer merely serves to confirm that the Respondent cannot deny an awareness of the Complainant’s trademarks at the point of registration of the disputed domain name (on this subject, see section 3.7 of the WIPO Overview 3.0).
Even had the Respondent attempted to deny knowledge of the Complainant and its marks or any intent to target these, the Panel notes that the Respondent was also the respondent in a recent complaint brought by the Complainant in which the panel found that the Respondent had registered and used the domain name in bad faith (see: Philip Morris Products S.A. v. Tony Mak,WIPO Case No. D2017-1623). Given the proximity in time between the notification of the complaint to the Respondent in that case and the creation of the disputed domain name in the present case there seems to the Panel to be no doubt that, in the present case, the Respondent was intent on taking unfair advantage of the Complainant’s rights by virtue of its registration of the disputed domain name and indeed that its principal purpose was to continue the activity which has since been condemned by the panel in the previous case.
In all of 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 17, 2018
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