The Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
The Respondent is Domain Admin/Hongwei Song, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with L Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 12, 2019. On July 12, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 14, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name(s) which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 16, 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 July 17, 2019.
The Center verified that the Complaint 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 July 23, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 12, 2019.
The Center appointed Haig Oghigian as the sole panelist in this matter on August 23, 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 Administrative Panel finds the following as uncontested facts:
- The Complainant is the owner the IQOS trademark in word (first registered on July 10, 2014, International registration number 1218246) and various other devices and related products including ‘HEET’ (first registered on May 17, 2016, International registration number 13120860) and ‘HEETS’ (first registered on July 19, 2016, International registration number 1326410) and others, all in multiple jurisdictions.
- The Complainant has used these trademarks in association with “Reduced Risk Products” vapor cigarettes it created and has sold since 2014.
- The Complainant offers these products in approximately 45 markets across the world, with 7.3 million current customers, through official IQOS stores, websites and authorized distributors and retailers. The Complainant has yet to appoint distributors or authorize distribution in numerous countries across the globe.
- The Respondent registered the disputed domain name on July 8, 2019 and is using it to operate a website selling IQOS products including HEET and HEETS branded cigarettes. 5. Parties’ Contentions A. Complainant
The Complainant claims the Respondent’s use of the disputed domain name to sell IQOS branded products online globally is confusingly similar to their own trademarks and ownership rights. It further claims the Respondent has no rights or legitimate interests in the disputed domain name. It argues that the use of the disputed domain name by the Respondent is in bad faith and, therefore, requests the disputed domain name be transferred to the Complainant accordingly. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The disputed domain name incorporates the entirety of the Complainant’s HEET and HEETS trademarks. It differs from the Complainant’s trademark merely by the addition of “shoponline” after “heet”. The Panel finds the mere addition of a descriptor of the provision of services following a registered and well-known trademark does not avoid a finding of confusing similarity under the first element (see AB Electrolux v. ID Shield Service,WIPO Case No. D2015-2027and its progeny).
Under the principles set forth in section 1.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), this Panel determines that the disputed domain name is confusingly similar to the Complainant’s HEET and HEETS trademark. B. Rights or Legitimate Interests
The Complainant indicates it has never authorized the Respondent to register or use any domain name by using its trademark. There is no business relationship between the Parties, and the Respondent is not commonly known by the disputed domain name. Noting the nature of the disputed domain name, the fact that the disputed domain name is being used to host a site selling the Complainant’s product further negatively reflects on the Respondent’s use. The Respondent has not responded to provide any evidence of legitimate use. Accordingly, and also noting the Panel’s findings under the next section, based on the available record and Policy, paragraph 4(a)(ii),the Panel finds that the Complainant has made out a prima facie case, which has not been rebutted by the Respondent, and that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Panel finds that the Complainant has established a global brand for its products and finds it difficult to believe that the Respondent was unaware of the brand, and just happened to register a confusingly similar disputed domain name . Noting the nature of the disputed domain name, the fact that the disputed domain name resolves to a website featuring the sale of the Complainant’s Heet cigarettes, including IQOS products, further reveals a financial motive of misleading Internet users, who are trying to find the Complainant’s website, to instead visit the Respondent’s website for its own financial gain. The Panel further notes the Respondent’s use of Complainants trademarks, brands and copyrighted images along with its notice of copyright ownership on the website as to the images and content depicting the Complainant’s brands and product, shows an intention to mislead consumers into believing it is an authorized site. The fact that the Respondent has failed in any way to challenge the Complainant’s contentions further leads the Panel to the conclusion that its registration and use of the disputed domain name has been done in bad faith as set forth under Policy, paragraphs 4(a)(iii) and 4(b)(iv). 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.
Haig Oghigian
Sole Panelist
Date: September 4, 2019
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