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 (“U.S”) / Will Heighington of Yuen Long, New Territories, Hong Kong, China. 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 September 10, 2018. On September 10, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 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 September 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 September 18, 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 September 24, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 14, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 15, 2018.
The Center appointed Francine Tan as the sole panelist in this matter on October 29, 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 belongs to the group of companies affiliated to Philip Morris International Inc. (“PMI”). PMI is an international tobacco company with products sold in approximately 180 countries.
PMI developed a brand of “Reduced Risk Products” under the brand IQOS. The IQOS product is a precisely controlled heating device into which specially designed tobacco consumables are inserted and heated to generate a nicotine-containing aerosol.
The IQOS products were first launched by PMI in Nagoya, Japan, in 2014. Currently, the IQOS brand of products can be found in key cities in around 40 markets across the world. The Complainant states that as a result of extensive investment and international sales and marketing efforts, the IQOS products have achieved a considerable level of international success and reputation. Over 5 million adult smokers have switched to the IQOS products worldwide. The IQOS products are almost exclusively distributed through PMI’s official IQOS stores and websites.
The Complainant owns a large portfolio of trademarks, including for the words HEETS and HEATSTICKS. The trade mark HEETS and a stylized version thereof are registered under International Registration Nos. 1326410 and 1328679, respectively. The registrations date from July 2016 and cover many jurisdictions including China, Singapore, the European Union, the U.S, Australia, New Zealand, Japan, the Republic of Korea, India, Turkey and Mexico. The trade mark HEATSTICKS (dating from July 2014) is registered under International Registration No. 1217386, covering, inter alia, the European Union, New Zealand, India, Turkey, and the Philippines.
The disputed domain name was registered on May 17, 2018. The disputed domain name resolves to a website which offers the Complainant’s HEETS, HEATSTICKS and IQOS-branded products as well as accessories of competing brands.
A disclaimer appears at the bottom of the Respondent’s website (“the disclaimer”) which states, inter alia:
“All product and company names are trademarks or registered trademarks of their respective holders. Use of them does not imply any affiliation with nor endorsement by them.
‘IQOS’, ‘Marlboro’ and ‘Heatsticks’ are registered trademarks of PMI (Philip Morris International Inc.) in the United States and/or other countries.
Heat Shop USA is not endorsed nor affiliated with PMI …”. 5. Parties’ Contentions A. Complainant
The Respondent, by its website, puts itself out to be an official online retailer of the Complainant’s IQOS and HEETS or HEATSTICK-branded products in the U.S. by adapting the Complainant’s HEETS and HEATSTICKS trade mark in the dispute domain name with the descriptive terms, “shop” and “US”. The Respondent’s website features a corresponding logo of the Complainant at the top left-hand corner, being a location where Internet users usually expect to find the name of the online shop and/or the name of the website owner.
The disclaimer on the Respondent’s website attempts to clarify the Respondent’s relationship with the Complainant. However, the website contains some of the official product images belonging to the Complainant while at the same time providing a copyright notice at the bottom of the website claiming copyright material presented on the website. This gives the impression of an affiliation with the Complainant.
The disputed domain name is confusingly similar to the trademarks HEETS and HEATSTICKS in which the Complainant has rights. The disputed domain name contains the indicative term “heat” and the descriptive terms “shop” and “usa”. The term “HEAT” is not commonly used to describe tobacco products. Although the disputed domain name uses the term “heat” instead of “heets”, the combination of the terms making up the disputed domain name is used to refer to the Complainant’s products offered in the online shop. The disputed domain name may divert Internet traffic away from the Complainant as a result of the miss-spelling of the Complainant’s HEETS trade mark.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has not been licensed or permitted by the Complainant to use any of its trademarks or to register a domain name incorporating its HEATSTICKS or HEETS trademarks or a domain name which will be associated with these marks. 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 Respondent is not an authorized reseller of the IQOS or HEETS/HEATSTICK-branded products. These products are not currently marketed or sold by the Complainant in the U.S. A reseller can have legitimate interests in a domain name at issue if certain criteria, as set out in the leading case of Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903are met. The Respondent does not meet the criteria as it is not only offering the Complainant’s products but also those of competing brands. Furthermore, the disclaimer is not presented in a clear and sufficiently prominent manner and is effectively “lost” in the midst of all the website content showing the various trademarks and proprietary material of the Complainant.
The fact that the Respondent sought to hide his identity by using the privacy protection service shows that the Respondent is not interested in clarifying that the website is not endorsed by the Complainant but wants to give the false impression that the website is that of an official retailer.
The disputed domain name was registered and is being used in bad faith. It is evident from the Respondent’s use of the disputed domain name that the Respondent knew of the Complainant’s HEATSTICKS and HEETS trademarks when registering the disputed domain name. 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. The Respondent has registered the disputed domain name with the intention to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s HEATSTICKS and HEETS trademarks as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location. The bad-faith use is evidenced by the Respondent’s use of the Complainant’s official product images accompanied by a copyright notice claiming copyright for the website, as well as the promotion and sale of products of competing brands. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to establish each of the following:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant 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 has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has shown it has rights in the trademarks HEET and HEATSTICKS. The question to be addressed in relation to paragraph 4(a)(i) of the Policy is whether the disputed domain name is confusingly similar to either or both of these trademarks since it is not identical to the Complainant’s HEET and HEATSTICKS trademarks.
The Panel may find confusing similarity under paragraph 4(a)(i) of the Policy where a domain name incorporates the entirety of a trade mark or where at least a dominant feature of the relevant mark 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”)).
Section 1.7 of the WIPO Overview 3.0 also reflects an acceptance of the possibility for panelists to consider the website content of the Respondent to which the disputed domain name resolves in considering the first issue under paragraph 4(a) of the Policy:
“… panels have also found that the overall facts and circumstances of a case (including relevant website content) may support a finding of confusing similarity, particularly where it appears that the respondent registered the domain name precisely because it believed that the domain name was confusingly similar to a mark held by the complainant”.
In this case, the Respondent puts itself out to be an official online retailer of the Complainant’s IQOS and HEETS or HEATSTICK-branded products in the U.S. Considering the content of the website, it does appear more likely than not that the Respondent chose the disputed domain name comprising the word “heat” because of the connection and confusing similarity with the Complainant’s HEETS and HEATSTICKS marks. The addition of the terms “shop” and “us” (the latter being a common abbreviation for the United States) are merely generic in nature and do not serve to remove the confusing similarity.
The Panel therefore finds that the disputed domain name is confusingly similar to a mark in which the Complainant has rights. The requirements of paragraph 4(a)(i) of the Policy have been satisfied. B. Rights or Legitimate Interests
The Panel is of the view that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant did not license or permit the Respondent to use any of its trademarks or to register a domain name incorporating its HEATSTICKS or HEETS trademarks or a variant thereof which will be associated with these marks. The Panel finds it useful to cite from a panel decision issued earlier this year (Philip Morris Products S.A. v. Contact Privacy Inc. Customer 0150128648/Chen Yu Chen, HeatSHopUSA,WIPO Case No. D2018-0601) involving a similar domain name :
“… 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 that 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 this case, the Respondent is not an authorized reseller of IQOS or HEETS/HEATSTICK-branded products and neither are these products currently marketed or sold by the Complainant in the U.S. The Respondent does not meet the Oki Data criteria as it is not only offering the Complainant’s products but also those of competing brands. The disclaimer is of no effect as it is indeed “lost” in the midst of all the content of the Respondent’s website content showing the various trademarks and proprietary product images of the Complainant. The Panel is of the view that, for the Respondent to claim that it is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue, would not be a plausible argument.
The Respondent has, in any event, failed to respond and refute the Complainant’s assertions, as a result of which the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name.
Paragraph 4(a)(ii) of the Policy has accordingly been established. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that any of these circumstances, if found by the Panel to be present, would be evidence of the bad faith registration and use of the domain name:
“(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name 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 on-line 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 the respondent’s website or location.”
Section 3.1 of the WIPO Overview 3.0 provides that:
“Given that the scenarios described in UDRP paragraph 4(b) are non-exclusive and merely illustrative, even where a complainant may not be able to demonstrate the literal or verbatim application of one of the above scenarios, evidence demonstrating that a respondent seeks to take unfair advantage of, abuse, or otherwise engage in behavior detrimental to the complainant’s trademark would also satisfy the complainant’s burden.”
The Panel is persuaded that the Respondent has specifically targeted the Complainant’s trademarks. It is obvious from the content of the Respondent’s website, including the disclaimer, that the Respondent is well aware of the Complainant and its IQOS, HEET and HEATSTICKS trademarks. It is evident that the Respondent is seeking to take unfair advantage of the Complainant’s reputation in these trademarks and to give the impression that it is an authorized reseller of the Complainant’s products. The Respondent’s misuse of the Complainant’s trademarks and proprietary material on its website is abusive in nature and is behavior which is detrimental to the Complainant’s trademarks. Further, the Respondent’s registration and use of the disputed domain name is disruptive to the Complainant’s business and leads to confusion in the marketplace, especially since the Complainant’s IQOS or HEETS/HEATSTICK-branded products are not yet available in the U.S.
Taking a holistic view of the circumstances and applying the principle set out in the above-referenced portion of section 3.1 of the WIPO Overview 3.0, the Panel finds that the disputed domain name was registered and is being used in bad faith. Accordingly, paragraph 4(a)(iii) of the Policy has been established. 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.
Francine Tan
Sole Panelist
Date: December 2, 2018
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