The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Contact Privacy Inc. Customer 0154590055, Canada, / Mikhaul Khanine, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name (the “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 May 22, 2019. On May 23, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 23, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 27, 2019, 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 amended Complaint on May 27, 2019.
The Center verified that the Complaint together with the amended 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 May 28, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 17, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 19, 2019.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on June 24, 2019. 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 Philip Morris International Inc. (“PMI”). PMI is a leading international tobacco company, with products sold in approximately 180 countries. PMI has developed a number of products, such as IQOS. IQOS is a controlled heating device into which specially designed tobacco products under the brand names “HEETS” or “HeatSticks” are inserted and heated to generate a flavorful nicotine-containing aerosol. The IQOS System was first launched by PMI in Nagoya, Japan in 2014 and has obtained 17.3% share of the market in Japan. Today the IQOS System is available in key cities in around 44 markets across the world, and it has approximately 7.3 million consumers worldwide. It is almost exclusively distributed through PMI’s official IQOS stores and websites and selected authorized distributors and retailers.
The Complainant has trademark registrations relating to HEETS, such as International Registration No. 1328679 registered on July 20, 2016 and International Registration No. 1326410 registered on July 19, 2016. The registrations designate a multitude of countries.
The Domain Name was registered on April 28, 2019. According to the Registrar, the Domain Name expires on April 28, 2020. At the time of filing the Complaint, the Domain Name redirected to a website allegedly offering the Complainant’s IQOS/HEETS System. At the time of drafting the Decision, the Domain Name resolved to an error webpage. 5. Parties’ Contentions A. Complainant
The Complainant has registered trademark rights in HEETS. The Complainant submits that the Domain Name is confusingly similar to the Complainant’s trademark. The Domain Name adopts the Complainant’s trademarks. The addition of “shops” is insufficient to avoid a finding of confusing similarity under the first element of the UDRP.
The Complainant submits that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant asserts that the Respondent is unable to demonstrate rights or legitimate interests in the Domain Name. The Respondent has not been allowed by the Complainant to make any use of its trademarks. The Domain Name redirects to a website that does not meet the requirements for a bona fide offering of goods. The website, prominently and without authorization, presents the Complainant’s registered HEETS trademark, and uses the Complainant’s official product images and marketing materials without authorization, while at the same time falsely claiming copyright in this material. The website includes no information regarding the identity of the provider of the website. The disclaimer offered at the bottom of the website is not presented in a clear and sufficiently prominent manner. It is created a false impression of a commercial relationship between the website and the Complainant.
The Complainant argues that the Respondent had knowledge of the Complainant’s and its products at the time of registration of the Domain Name. The Respondent registered and used the 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 registered HEETS trademark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on his website or location. It constitutes registration and use in bad faith pursuant to paragraph 4(b)(iv) of the Policy. By reproducing the Complainant’s trademark in the Domain Name and the title of the website, the Respondent’s website suggests the Complainant or an affiliated dealer as the source of the website. This is supported by the Respondent’s use of the Complainant’s official product images and marketing materials. Finally, the use of a privacy protection service to hide the Respondent’s identity also indicates bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has established rights in the trademark HEETS. The test for confusing similarity involves the comparison between the trademark and the Domain Name. In this case, the Domain Name incorporates the Complainant’s trademark in its entirety with the addition of “shops”. The addition does not prevent a finding of confusing similarity. For the purpose of assessing confusing similarity, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) “.com”, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.
The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has made unrebutted assertions that is has not granted any authorization to the Respondent to register a domain name containing the Complainant’s trademark or otherwise make use of the mark. Based on the evidence, the Respondent is not affiliated or related to the Complainant in any way. There is no evidence that the Respondent has registered the Domain Name as a trademark or acquired unregistered rights. The way the Respondent has used the Domain Name to present itself as a reseller of the Complainant’s products is not bona fide. The Panel agrees with the Complainant, the website presented itself as a reseller. The website used the Complainant’s official product images and marketing materials. It gives the false impression of a commercial relationship between the website and the Complainant. The disclaimer offered at the bottom of the website is not presented in a clear and sufficiently prominent manner. In addition, the Panel considers that the nature of the Domain Name carries a risk of affiliation or association, see section 2.5.1 of the WIPO Overview 3.0.
The Panel finds the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Taking into account the Respondent’s use of the Domain Name, the Panel concludes that the Respondent knew of the Complainant and its business when the Respondent registered the Domain Name.
The Respondent has attempted to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. By reproducing the Complainant’s trademark in the Domain Name and on the web page, the Respondent’s website suggested the Complainant or an affiliated dealer as the source. This is supported by the Respondent’s use of the Complainant’s official product images and marketing materials. The use of a privacy protection service and the fact that the Respondent has not replied to the Complainant’s contentions, further point to bad faith.
The Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of paragraph 4(a)(iii) of the Policy. 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 Domain Name be transferred to the Complainant.
Mathias Lilleengen
Sole Panelist
Date: June 28, 2019
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