Complainant is Philip Morris Products S.A., Switzerland, represented by D.M. Kisch Inc., South Africa.
Respondent is Contact Privacy Inc. Customer 0155214584, Canada / Richard Chen, Heat It Up, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name (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 August 30, 2019. On August 30, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on September 2, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. On September 3, 2019, Complainant filed an amended Complaint
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 Respondent of the Complaint, and the proceedings commenced on September 3, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 23, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 24, 2019.
The Center appointed Roberto Bianchi as the sole panelist in this matter on October 2, 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
Complainant, a company established under the laws of Switzerland, is a subsidiary of Philip Morris International, Inc., (“PMI”).
According to the Complaint, PMI developed and sells IQOS, a heating device into which specially designed tobacco products, under the trademarks HEETS or HEATSTICKS, are inserted and heated to generate an aerosol containing nicotine. The IQOS system also consists of an IQOS Pocket Charger, specially designed to charge the IQOS Holder (collectively referred to as the IQOS System). The IQOS System was first sold in Nagoya, Japan, in 2014. The IQOS System is sold in around 48 markets across the world to some 8 million consumers. To date, the IQOS System has been almost exclusively distributed through PMI’s official IQOS stores and websites, and selected authorized distributors and retailers.
Complainant owns, inter alia, the following trademark registrations:
HEETS (word/device), International Registration No. 1328679, registered on July 20, 2016, designating Albania, Armenia, Australia, Azerbaijan, Bahrain, Belarus, Bosnia and Herzegovina, Botswana, China, Colombia, Curaçao, Egypt, United States, North Macedonia, Russian Federation, Philippines, Georgia, India, Iceland, Israel, Japan, Kenya, Kyrgyzstan, Liechtenstein, Morocco, Mexico, Monaco, Montenegro, Mozambique, Norway, New Zealand, the African Intellectual Property Organization (“OAPI”), Republic of Korea, Republic of Moldavia, Serbia, Singapore, Oman, Turkmenistan, Turkey, European Union, Ukraine, Uzbekistan, and Viet Nam;
HEETS (word), International Registration No. 1326410, registered on July 19, 2016, designating Albania, Armenia, Australia, Azerbaijan, Bahrain, Belarus, Bosnia and Herzegovina, Botswana, China, Colombia, Curaçao, Egypt, United States, North Macedonia, Russian Federation, Philippines, Georgia, India, Iceland, Israel, Japan, Kenya, Kyrgyzstan, Liechtenstein, Morocco, Mexico, Monaco, Montenegro, Mozambique, Norway, New Zealand, OAPI, Republic of Korea, Republic of Moldavia, Serbia, Singapore, Oman, Turkmenistan, Turkey, European Union, Ukraine, Uzbekistan, and Viet Nam; and,
HEET (word), International Registration No. 1312086, registered on May 17, 2016, designating Albania, Algeria, Armenia, Australia, Azerbaijan, Bahrain, Belarus, Bosnia and Herzegovina, Botswana, China, Colombia, Egypt, North Macedonia, Russian Federation, Philippines, Georgia, Ghana, India, Iceland, Israel, Japan, Kenya, Kyrgyzstan, Liechtenstein, Morocco, Mexico, Monaco, Montenegro, Mozambique, Namibia, Norway, New Zealand, OAPI, Republic of Korea, Republic of Moldavia, Serbia, Singapore, Swaziland, Oman, Turkmenistan, Turkey, Ukraine, Uzbekistan, and Vietnam.
The Disputed Domain Name was registered on July 15, 2019.
Currently, the Disputed Domain Name does not resolve to any active website, since the browser returns an “Error 500” message. 5. Parties’ Contentions A. Complainant
Complainant contends that the Disputed Domain Name is identical or confusingly similar to the HEET and HEETS trademarks, in which Complainant has rights. The Disputed Domain Name reproduces these trademarks in their entirety, in addition to the non-distinctive and descriptive word “shop” and the geographical abbreviation for the United States “us”. Any Internet user when visiting a website provided under the Disputed Domain Name will reasonably expect to find a website commercially linked to the owner of the HEET and HEETS trademarks. This unlawful association is exacerbated by the use of Complainant’s official product images without Complainant’s authorization.
Complainant also contends that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks or to register a domain name incorporating its HEET and HEETS trademarks, or a domain name that will be associated with these trademarks.
According to Complainant, Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. Respondent’s behavior shows a clear intent to obtain an unfair commercial gain, with a view to misleadingly diverting consumers or to tarnish the trademarks owned by Complainant. Firstly, Respondent is not an authorized distributor or reseller of the IQOS System. Secondly, the website at the Disputed Domain Name does not meet the requirements of Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, according to which the respondent must use the site to sell only the trademarked goods; second, the website itself must accurately disclose the respondent’s relationship with the trademark owner; and the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name. It is a common principle in all cases under the Oki Data scenario that the use of a domain name cannot be fair if it suggests affiliation with the trademark owner.
Complainant further says that the Disputed Domain Name in itself suggests at least an affiliation with Complainant and its HEET and HEETS trademarks, as it wholly reproduces these trademarks together with the non-distinctive and descriptive word “shop” and the geographical abbreviation for the United States, i.e. “us”. In addition, the owner / administrator of the website, prominently and without authorization presents Complainant’s registered HEET and HEETS trademarks appearing at the top left of the website, i.e., where relevant consumers will usually expect to find the name of the online shop and/or the name of the website`s provider. The website further uses Complainant’s official product images without authorization, while at the same time falsely claiming copyright in this material. This illegitimate and false claim of rights in Complainant’s official copyright-protected material further supports the false impression that Complainant endorses the website.
Complainant also explains that the website at the Disputed Domain Name includes no information regarding the identity of the provider of the website, which is only identified as “HeetShop” under the “About Us” page, being a name which similarly includes (without authorization) Complainant’s HEET and HEETS trademarks and further serves to perpetuate the false impression of an official commercial relationship between the website and Complainant. As Complainant’s IQOS System is primarily distributed through official or endorsed stores, in this case Internet users / relevant consumers are clearly misled regarding the relationship between the website under the Disputed Domain Name and Complainant, and will falsely believe this website to be an official / endorsed distributor. Such use of the Disputed Domain Name cannot be considered a bona fide offering of goods and does not establish a legitimate interest on behalf of Respondent.
Complainant contends that the Disputed Domain Name is registered and is being used in bad faith. Respondent’s use of the Disputed Domain Name shows that Respondent knew of Complainant’s HEET and HEETS trademarks when registering the Disputed Domain Name. Respondent started offering Complainant’s IQOS System immediately after registering the Disputed Domain Name. Furthermore, the terms HEET and HEETS are purely imaginative, and unique to Complainant. These terms are not commonly used to refer to tobacco products. It is therefore beyond the realm of reasonable coincidence that Respondent chose the Disputed Domain Name without the intention of invoking a misleading association with Complainant.
Respondent’s use of the Disputed Domain shows that Respondent registered and used the Disputed Domain Name with the intention to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with Complainant’s registered HEET 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, which constitutes registration and use in bad faith pursuant to paragraph 4(b)(iv) of the Policy. By reproducing Complainant’s registered trademark in the Disputed Domain Name and in the title of the website, Respondent’s website clearly suggests the source of the website is Complainant or an affiliated dealer of Complainant, which it is not. This suggestion is further supported by Respondent’s use of Complainant’s official product images, accompanied by a notice claiming the copyright for the website and its contents.
Finally, the fact that Respondent is using a privacy protection service to hide its identity may constitute in itself a factor indicating bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
By submitting printouts taken from the corresponding official trademark database, Complainant has shown to the satisfaction of the Panel that it owns trademark rights in the HEET and HEETS trademarks. See section 4 above.
The Panel notes that in the Disputed Domain Name, Complainant’s marks HEET and HEETS are incorporated in their entirety, with the addition of the descriptive terms “shop” and “us” (the latter being both the abbreviation for “United States” and the objective case of the pronoun “we”), and the top level domain “.store”. It is well established that where the relevant trademark is recognizable within the Disputed Domain Name the addition of other terms would not prevent a finding of confusing similarity under the first requirement of the Policy. See WIPO Overview of WIPO Panel Views, Third Edition (“WIPO Overview 3.0”), section 1.8.
Therefore, the Panel finds that the Disputed Domain Name is confusingly similar to the marks HEET and HEETS, in which Complainant has rights. B. Rights or Legitimate Interests
Complainant says it has not licensed or otherwise authorized Respondent to use any of its trademarks or to register a domain name incorporating its HEET and HEETS trademarks, or that will be associated with these trademarks. The Panel does not see any evidence of any such license or authorization.
The Panel also notes that according to the relevant WhoIs data, the registrant of record of the Disputed Domain Name is “Richard Chen” and/or “Heat It Up”, and that there is no allegation or evidence that this person or entity is known – commonly or otherwise – by the Disputed Domain Name, which discards the applicability of Policy paragraph 4(c)(ii).
Complainant also has shown with a printout obtained on August 27, 2019, that on the website at the Disputed Domain Name, IQOS kits and other IQOS products such as “Heatsticks” were offered for sale under the title “HEETSHOP”. i.e., a title comprising Complainant`s registered HEET and HEETS marks plus the dictionary and / or descriptive terms “shop” and “us”. The Panel agrees with Complainant that this term suggests that the source of the offering, as a minimum, is connected with Complainant`s mark and products. By not disclosing which kind of relationship exists (if any) to Complainant, Respondent failed to comply with an essential requirement for establishing a legitimate interest as a legitimate reseller, as outlined in the Oki Data scenario. See WIPO Overview 3.0, section 2.8.1.
In the Panel’s view, the use of the Disputed Domain Name was clearly meant to extract a commercial gain by creating a false impression of association with Complainant. This is neither a bona fide offering under Policy paragraph 4(c)(i), nor a fair or legitimate noncommercial use, without intent for commercial gain misleadingly to divert consumers, pursuant to Policy paragraph 4(c)(iii). Thus, Complainant succeeded in making a prima facie case that Respondent lacks rights and legitimate interests in the Disputed Domain Name.
For its part, Respondent failed to present the Panel with any reasons or explanation for having chosen the Disputed Domain name or for using it as shown. After receiving notice of the Complaint, Respondent even ceased to display an active website at the Disputed Domain Name. This suggests that apart from falsely creating the impression of an affiliation with Complainant, Respondent is not contemplating any legitimate use for the Disputed Domain Name. The Panel concludes that Respondent does not have any rights or legitimate interests in the Disputed Domain Name. C. Registered and Used in Bad Faith
The Panel notes that the registration of Complainant’s HEET and HEETS marks predates the registration of the Disputed Domain Name by three years. See section 4 above. The Panel also notes that the only products offered on the website at the Disputed Domain Name are covered by the HEET and HEETS marks and other trademarks of Complainant. From these facts the Panel infers that at the time of registering the Disputed Domain Name, Respondent had Complainant`s marks and products in mind, and that it clearly targeted them. In the circumstances of this case, this means that the registration of the Disputed Domain Name was in bad faith.
Complainant has shown that until recently, the Disputed Domain Name was used in a website profusely displaying Complainant’s HEET and HEETS marks, and offering products under such marks and other products trademarked by Complainant, for delivery in the United States and without any authorization or license by Complainant. This offering was made without stating the nature of the relationship of the website to Complainant (or the lack of any such relationship). In other words, by falsely creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of its website or of products or services on its website, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website. According to Policy paragraph 4(b)(iv), this is a circumstance of registration and use in bad faith of the Disputed Domain Name.
Currently, as shown in section 4 above, the Disputed Domain Name does not resolve to any active website (the browser returns an “Error 500” message.) In addition, Respondent failed to respond to the Complaint and to provide any explanation for its former use of the Disputed Domain Name, or for the present lack of any active use. This suggests that Respondent does not contemplate any use that would not be in violation of Complainant’s rights, i.e., in bad faith.
For these reasons, the Panel concludes that the Disputed Domain Name was registered and is being used in bad faith. 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 Complainant.
Roberto Bianchi
Sole Panelist
Date: October 15, 2019
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